Tag Archives: Printed Publication

Defining a Printed Publication as Prior Art

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In Medtronic Inc. v. Mark Barry, the PTAB confirmed the patentability of some of Barry’s patented back-straightening claims found in U.S. Patent Nos. 7,670,358 and 7,776,072.  The saving-grace for Barry was a PTAB ruling that a set of Videos and Slides distributed by Medtronic did not count as prior art “printed publications” because they were not sufficiently publicly accessible prior to Barry’s application filing. On appeal, however, the Federal Circuit has vacated the lower tribunal opinion — holding that the Board did not consider all the relevant factors in its determination.

Section 102 of the patent act establishes “printed publications” as a form of prior art.

Printed: Whether a publication is “printed” has been broadly applied to allow widely for fixed expressions – including recorded video and powerpoint slides. MPEP 2128 (R-08.2017).

Publication: At issue in this case is the “publication” requirement — which has been interpreted as a public circulation requirement.  That said, there is no requirement that the document be circulated to the public at large.  Rather, courts have held that circulation at a relevant scientific conference can be sufficient so long as there is no confidentiality requirement. Deep Welding, Inc. v. Sciaky Bros. Inc., 417 F.2d 1227, 1235, 163 USPQ 144 (7th Cir. 1969). In the leading case of In re Hall, the Federal Circuit ruled that ‘a single cataloged thesis in one university library’ was sufficient circulation – even without proof that anyone actually read the work. In re Hall, 781 F.2d 897 (Fed. Cir. 1986). In that instance, accessibility to the work was the key – “whether interested members of the relevant public could obtain the information if they wanted to.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988).

In this case, a CD containing the video was distributed at three spinal deformity research symposia and printed versions of the slides were distributed at two of the three events.

A number of court decisions have walked through this type of conference distribution applying what the court terms a “case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004).  Still, in all of these inquiries, the primary question is whether the reference has been sufficiently made accessible to interested members of the public.

Consider:

  • MIT v. AB Fortia, 774 F.2d 1104, 1109 (Fed. Cir. 1985): Paper that was orally presented at a conference was a printed publication even though only about 50 people were told of the paper and document itself was only distributed to six people.
  • Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319 (Fed. Cir. 2009): Distributed research papers were not printed publications based upon “academic norms” that created an “expectation” of confidentiality. In Cordis, the court expressly ruled that a norm or expectation of confidentiality is sufficient to defeat public accessibility — even if there was no legal requirement of confidentiality.
  • In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004): Printed slide presentation displayed on a poster at a conference and without any stated expectation against copying counted as a printed publication.

In Klopfenstein, the court walked through a set of factors:

The factors relevant to the facts of this case are: the length of time the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and the simplicity or ease with which the material displayed could have been copied.

Bringing these cases together, the Federal Circuit here explained in Medtronic that the PTAB should have considered a set of factors regarding the distribution of the video and slides:

As relevant to this case, the size and nature of the meetings and whether they are open to people interested in the subject matter of the material disclosed are important considerations. Another factor is whether there is an expectation of confidentiality [either formal or informal] between the distributor and the recipients of the materials.

On remand, the PTAB will refresh its analysis.

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The court also provided the following footnote:

The Supreme Court recently held in SAS Institute Inc. v. Iancu, 584 U.S. __ (2018), that the statute does not permit a partial institution leading to a partial final written decision. Because the final written decisions relating to this appeal do not address every ground raised in the petitions, we understand from the Board’s recent guidance document, Guidance on the impact of SAS on AIA trial proceedings (April 26, 2018), that it will consider the previously non-considered grounds on remand.

The footnote here is not an order, and should be read along with the holding in PGS Geophysical v. Iancu (reopening partially instituted IPR not necessary).

= = = = =

In 2016, a Texas Jury awarded Barry $20 million for the infringement. That case is on appeal with Medtronic arguing prior use, on sale bar, prior invention (102(g)), inequitable conduct, and improper damage calculation.

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Metallizing Forfeiture Post-Helsinn

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The following guest post is by Daniel Taskalos. After reading his 2013 Stanford Technology Law Review article on Metallizing Engineering post-AIA, I asked Mr. Taskalos to revisit those issues here in Patently-O. – DC

In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit had its first opportunity to address the impact of the “or otherwise available to the public” clause contained in post-AIA 35 U.S.C. § 102.  In finding that the AIA “did not change the statutory meaning of ‘on sale’ in the circumstances involved here,” the Federal Circuit provided insight into the continued relevance of the forfeiture doctrine of Metallizing Engineering v. Kenyon Bearing.

The critical issue in Helsinn was whether the post-AIA definition of prior art requires public disclosure of the details of an invention in order to trigger the on-sale bar.  In the AIA, Congress revised § 102—otherwise known as the “novelty provision.”  As revised, the new novelty provision states:

(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 before the effective filing date of the claimed invention.

While the AIA maintained the pre-AIA language of “patented,” “described in a printed publication,” “in public use,” and “on sale,” it added the emphasized clause above (the “catch-all clause”).  The AIA does not provide any elaboration on the import of the catch-all clause, leaving many to wonder exactly what its presence means for the interpretation of the other, well-known categories of prior art.

Since its enactment in 2011, scholars have debated the effect of the catch-all clause on the “public use” and “on sale” statutory bars.*  Helsinn asserted that the catch-all clause modifies prior-art categories such that only disclosures that publicly disclose the details of the invention qualify as prior art.  Advocates like Helsinn contend that the intention of Congress was to overrule “secret” use and sale decisions, like Metallizing Engineering.

Others, including Teva, argue that the addition of the catch-all clause does not invalidate the years of case law interpreting “public use” and “on sale.”  These advocates contend that interpreting the catch-all clause to impose a “public” requirement would be a foundational change to the purpose and rationale for the public use and on sale bars support—in the absence of a clear repudiation by Congress of the pre-AIA law.

*The number of articles discussing both sides of the debate is far too numerous to provide a full list.  You can find a few of these articles listed here.

The facts of Helsinn presented a unique situation in which to consider this important question.  Helsinn sued Teva for allegedly infringing four patents directed to a formulation of palonosetron for reducing chemotherapy-induced nausea and vomiting (“CINV”).  All the asserted claims covered a specific palonosetron amount in a solution—0.25 mg.  The parties agreed that the critical date for all four patents was the same—but different laws were implicated by the patents.  Three of the patents were governed by the pre-AIA patent laws, while the last patent fell under the AIA.

Teva alleged that Helsinn’s asserted patents were invalid under § 102.  The conduct in question concerned an agreement entered into by Helsinn with another party to market and distribute Helsinn’s palonosetron formulation.  Almost two years before the critical date, Helsinn agreed with MGI Pharma, Inc., that MGI would market and distribute one or more formulations of palonosetron, contingent on approval by the FDA.  The agreement identified the 0.25 mg dosage as one of the potential formulations to be purchased and sold.  Although the existence of the deal was made public (through a required SEC filing), the specific formulation details were redacted.

Thus, the district court faced analyzing the same conduct under two sets of laws:  pre-AIA and post-AIA.  Under either, however, the same two-prong framework explicated in Pfaff v. Wells Electronics applied: the on-sale bar is triggered where before the critical date (1) there is a sale or an offer for sale and (2) the claimed invention was ready for patenting.  Under the Pfaff framework, the district court found that the distribution agreement constituted a sale with respect to the three pre-AIA patents.  But the district court interpreted Congress’ addition of the catch-all clause as a modification to the “on sale” category that placed a public requirement on the disclosure itself.  The district court found that under the AIA, a § 102-triggering sale must publicly disclose the details of the invention; a public sale that did not disclose the claim limitations was insufficient.

The Federal Circuit reversed this decision and provided an analysis may prove instructive in future cases concerning public uses and other non-informing disclosures.  In its opinion, the Federal Circuit noted that the support for Helsinn’s argument that § 102’s requirements changed with Congress’ addition of the catch-all phrase rested outside of the text of the amended provision; Helsinn relied primarily on floor statements by a few individual members of Congress.

The Federal Circuit noted that those floor statements appeared to show “at most” an intent to do away with case precedent concerning “public use” cases, not “on sale” cases.  According to the Court, the only “precedent” cited by the Congressmen were cases in which the invention was used in public, but that use did not disclose to the public the details of the claimed invention.  E.g., Egbert v. Lippman; Beachcombers International v. Wildewood Creative Products; Jumpsport, Inc. v. Jumpking, Inc.  Moreover, the Federal Circuit explained that even assuming the statements could be stretched to cover sale cases as well, the “secret sale” cases “were concerned entirely with whether the existence of the sale or offer was public,” not whether the details of the invention were disclosed.  Thus, the Court found the floor statements were of little support for a different interpretation of the statutory meaning of “on sale” under the AIA.

The Federal Circuit further found Helsinn’s argument unpersuasive because imposing a publicity requirement would  “work a foundational change in the theory or the statutory on-sale bar.”  In fact, the Federal Circuit noted that the issue of whether to impose a publicity requirement was exactly the situation in Pennock v. Dialogue, in which Justice Story created the on-sale bar.  In Pennock, Justice Story found that allowing a patent to stand after a sale that did not disclose the claim limitations “would materially retard the progress of science and the useful arts, and give a premium to those who should be least prompt to communicate their discoveries.”  Relying heavily on its prior case law, the Court also explained why  such a publicity requirement has never been considered necessary.  The Federal Circuit concluded by hold that at most, the catch-all clause just requires that the sale must put the patented product in the hands of the public,* not that it must be informed of all the limitations of the claim.

*Of course, the Federal Circuit did not mean that the product must be explicitly in the hands of the public.  As discussed in the opinion, “our prior cases have applied the on-sale bar even when there is no delivery, when delivery is set after the critical date, or, even when, upon delivery, members of the public could not ascertain the claimed invention.”

Looking at the Federal Court’s reasoning in Helsinn and The Medicines Co. v. Hospira, Inc., that Metallizing Engineering may remain good law under the AIA.  As the Federal Circuit made clear, it does not view the floor statements in Congress as evidencing a clear intent to overturn the “on sale” precedent, instead “at most” supporting an argument that the intent was to overturn the “public use” case law.  In The Medicines Co., the Federal Circuit referred to Metallizing as an “on sale” case: the conduct at issue in Metallizing was the sale of performing a particular claimed process for compensation before the critical date, i.e. activity triggering the on-sale bar.  Thus, the Federal Circuit would likely find mere floor statements to be of little relevance to a factual situation similar to Metallizing.  Moreover, as the Federal Circuit identified, the law regarding “secret sales” has always been concerned with whether the existence of the sale itself was publicly disclosed—not the details of the invention.  There is no indication in Metallizing that the sales at issue were not publicly known, so the same rationale from Helsinn should apply.

In Helsinn, the Federal Circuit anchored its holding on the fact that imposing a requirement that a triggering sale disclose the details of the invention directly contradicts Justice Story’s reasoning in Pennock for creating the on-sale bar.  As Justice Story saw it, to allow an inventor to exploit commercially his or her invention for an extended period and still maintain the ability to seek patent protection would undercut the “progress of science and the useful arts” and promote undesirable behavior.  This principle has been consistently reiterated by the Federal Circuit.  See The Medicines Co.; Atlanta Attachment Co. v. Leggett & Platt, Inc. (“The overriding concern of the on-sale bar is an inventor’s attempt to commercialize his invention beyond the statutory term.”).  The aim of discouraging the inventor from improperly extending the monopoly was one of the underlying reasons behind Judge Learned Hand’s decision in Metallizing.  Thus, it is possible that the Federal Circuit may find Metallizing to remain applicable after the AIA, despite the reduced ability for such conduct under the first-to-file concept of the AIA.*

*This is one argument raised in support of the view that the AIA explicitly overrules Metallizing.  Under the first-to-invent approach, this type of secret commercialization provided a greater incentive because even if another filed a patent on the claimed invention prior to the commercial exploiter, the exploiter could, in theory, establish prior invention and obtain the patent.  As prior invention is no longer a valid argument under first-to-file, the incentive to secretly exploit an invention is diminished.  However, the fact that success may be more difficult does not, in and of itself, mean the forfeiture doctrine no longer has value or applicability.  As long as one person is still able to commercially exploit his or her invention in a manner like that in Pennock or Metallizing, the reasoning for the doctrine would still apply.

The recent Supreme Court decision in TC Heartland LLC v. Kraft Food Grp. Brands LLC also provides support for the continued relevance of Metallizing.  See No. 16-341 (May 22, 2017).  At issue in TC Heartland was the impact of Congressional amendment of the general venue statute (28 U.S.C. § 1391(c)) on the interpretation of the patent venue statute that was not amended (28 U.S.C. § 1400(b)).  The patent venue statute has remained unchanged since the Supreme Court interpreted its scope, holding that a domestic corporation only “resides” for purposes of venue in a patent infringement action in its state of incorporation.  See Fourco Glass Co. v. Transmirra Products Corp. (1957).  However, after Congress amended the general venue statute in 1988, the Federal Circuit held that Congress’s amendment also changed the scope of where a corporation “resides” under § 1400(b) (although § 1400(b) remained unchanged).  See VE Holding Corp. v. Johnson Gas Appliance Co. (1990).  In TC Heartland, the Supreme Court reversed the Federal Circuit’s ruling in VE Holding, emphasizing that “[w]hen Congress intends to effect a change [to the statutory meaning of legal language], it ordinarily provides a relatively clear indication of its intent in the text of the amended provision.”

Accordingly, the TC Heartland decision can be interpreted as requiring clear congressional intent within the text of an amended provision itself to modify the settled meaning of statutory language.  Such an interpretation would further undermine the persuasiveness of the minimal floor statements discussed in Helsinn, given that those statements were by individual senators, put forth their interpretations of post-AIA § 102, and are not included within the text of the AIA.  Moreover, the Federal Circuit in Helsinn appears to have found the catch-all clause to not be a “clear indication if [Congress’s] intent in the text of the amended provision” to change the interpretation of “on sale” in the statute.  In light of the large amount of scholarly debate on the meaning of the clause, it seems unlikely that the Supreme Court would disagree with the Federal Circuit’s apparent determination.

After Helsinn, it appears that on-sale bar precedent has survived the AIA.  Applying the Court’s reasoning, and in view of other recent cases such as The Medicines Co. and TC Heartland, it appears the Metallizing Engineering precedent may also have survived the AIA, at least for now.  However, there is still the possibility that the Federal Circuit may take the opportunity presented by the ambiguity caused by the catch-all clause to revisit the ultimate decision in Metallizing.  Although the Federal Circuit may consider Metallizing to be an “on sale” case, Judge Hand’s opinion does rely on principles underlying both the “public use” and “on sale” bars.  As such, the forfeiture doctrine of Metallizing would appear to be an extra-statutory bar, not falling within either the “public use” or “on sale” categories entirely.  Because of this, some have questioned whether Judge Hand’s decision is actually correct.  See Dimitri Karshtedt, Did Learned Hand Get It Wrong?: The Questionable Patent Forfeiture Rule of Metallizing Engineering, 51 Vill. L. Rev. 261 (2012).  Moreover, although the Federal Circuit was not persuaded as to the “clear indication” of intent to change the meaning of “on sale” as advocated by Helsinn and others, that is not to say the Supreme Court would hold the same.

Daniel Taskalos is an intellectual property associate at Sheppard Mullin Richter & Hampton LLP.  His practice covers a range of issues, including litigation and counseling.

Helsinn: Post-AIA Public Sales are Prior Art Even Without Disclosing the Invention

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Helsinn v. Teva (Fed. Cir. 2017) [HelsinnDecision]

In an important decision, a Federal Circuit has interpreted the post-AIA on-sale bar of 35 U.S.C. § 102 to include sales made available to the public (i.e., noticed in an SEC filing), even if the published portion does not fully disclose the invention.

[Post-AIA On sale bar attaches] if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of sale.

The court here refused to particularly decide whether truly secret sales still qualify as prior art under Section 102, but (in my view), appears to strongly suggest that the on sale bar will continue to apply in the truly secret cases as well.

The AIA did not directly change the pre-AIA “on sale” language, but did linguistically suggest that only public offers for sale should be considered as prior art.  This change from prior law comes from the rewritten Section 102 that bars patentability of an invention that “was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(1).  Here, the linguistic argument is that the “otherwise available to the public” clause limits on-sale activity to those that are also available to the public.  This is the interpretation taken by the USPTO.  However, the PTO’s interpretation is given no deference by the Federal Circuit.  And, although some congressional history supports the change, the linguistic argument is not strong (in my opinion).

In the present case, the pre-filing sale was actually publicly announced in an SEC filing, and that filing included a redacted version of the contract.  According to the court, the disclosed agreement included “all the pertinent details of the transaction other than the price and dosage levels.”  Although the dosage levels were a key element of the claimed invention, the Federal Circuit ruled that the sale nonetheless created prior art:

Requiring such disclosure as a condition of the on-sale bar would work a foundational change in the theory of the statutory on-sale bar. Indeed, the seminal Supreme Court decision in Pennock addressed exactly such a situation— the public sale of an item but the withholding from “the public the secrets of [the] invention.” Pennock v. Dialogue, 27 U.S. (2 Pet.) 1, 19 (1829). Failing to find such a sale invalidating, said the Court, “would materially retard the progress of science and the useful arts, and give a premium to those who should be least prompt to communicate their discoveries.” Id.
It will be interesting to see how this develops moving forward.  PTO needs to immediately change its rules, and some prosecutors will need to start disclosing again.

Battle over Secret Sales and Secret Commercialization under the AIA

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by Dennis Crouch

Helsinn v. Dr. Reddy’s and Teva (D.N.J. 2016)

The America Invents Act of 2011 (AIA) amended the definitions of prior art under 35 U.S.C. § 102 – up for grabs in this case is whether the changes included a narrowing of the ‘on-sale bar.’  Prior to the AIA, the ‘on sale’ bar blocked patenting of inventions that had been “on sale in this country.”  Although not specific in the statute, courts interpreted the on-sale bar to include secret sales or offers-to-sell.  These typically include closed-door business-to-business and custom sales rather than retail sales.[1]  The AIA amended the statute in a number of ways – most pertinent here is addition of the ‘otherwise available to the public’ clause to Section 102(a)(1).[2]  The provision now reads:

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 before the effective filing date of the claimed invention; or

The question in this case is how to interpret the statutory phrase “on sale, or otherwise available to the public.”  The otherwise available to the public language suggests that the ‘on sale’ activity is also available to the public.  That reading, however, conflicts with the history of the on sale bar.  Which construction is correct?

The district court in Helsinn sided with the USPTO’s interpretation of the statute – that the AIA modified the definition of on-sale so that it now only includes publicly available sales activity.  This allowed the patentee in the case to avoid an invalidity finding based upon its own prior sales of the patented drug. On appeal, Teva offers its set of arguments to retain the old-meaning:

  1. In ordinary usage, an item is “on sale” whether sold privately or publicly.
  2. Courts have treated “on sale” as a term of art for almost two centuries for sound policy reasons grounded in the Constitution.
  3. Congress did not change the settled meaning of “on sale” by adding the phrase “otherwise available to the public.”
  4. The district court’s reading of “on sale” would render meaningless the crucial word “public” in [102(b)(1)(B)].
  5. A Committee Report and floor statements of two senators cannot accomplish what they failed to accomplish in the statute itself.
  6. The PTO’s interpretation is not entitled to deference.

[TevaSecretSaleBrief]

Professors Mark Lemley (Stanford) and Robert Merges (Berkeley) along with 39 other law professors have filed a brief in support of Teva’s arguments here – arguing that the new interpretation “would radically rewrite the law of prior art.”

The key legal question in the case is simple: did Congress mean to sweep away scores of established cases under the 1952 Act even though it reenacted language unchanged since 1870, merely because it added the phrase “or otherwise available to the public” to the list of prior art categories in the new AIA section 102? We think not. We have three primary reasons. First, the district court’s reading is inconsistent with the language and structure of the AIA. Second, it is inconsistent with Congressional intent in readopting the “on sale” and “public use” language in section 102. Finally, it would sweep away scores of cases decided over two centuries and radically rewrite a host of patent doctrines.

[TevaProfAmicusBrief] Moving forward, Helsinn’s responsive brief will be due April 21.

Of course, the issues here have been substantially debated already with commentators coming out on both sides of the debate:

= = = = =

AIA expanded the scope of prior art in a number of ways. This is one area, however, where it potentially shrunk the body of potential prior art.  Innovative entities with a robust business involving private-transactions and those who rely upon third-party manufacturers are the most likely to benefit by a changed-law.

An important policy question (that could also influence is the construction) is whether eliminating secret sales as prior art would actually allow an innovator secretly commercialize its patent for years and then subsequently obtaining patent rights.

= = = = = =

 

[1] The Federal Circuit has also include a manufacture-supply agreement. (E.g., a supplier seeking for to manufacture and supply your custom inventory).  This issue is currently being reconsidered by the Federal Circuit in the en banc case of Medicines Co. v. Hospira.

[2] The statute also eliminating the ‘in this country’ limitation for on-sale prior art and limited the one-year grace period associated with the on sale bar.

First AIA Lawsuits

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by Dennis Crouch

In one of the first lawsuits involving an AIA patent is Tinnus Enterprises, LLC et al v. Telebrands Corporation et al., 15-cv-00551 (E.D.Tex. 2015).  In that case, Tinnus alleges that Telebrands’ Baloon Bonanza infringes its U.S. Patent No. 9,051,066 – covering a “system and method for filling containers with fluids.” Bed Bath & Beyond is also a defendant.

The utility application was filed in September 2014 (claiming priority to a pair of February 2014 provisional applications) and issued in June 2015.  As part of the Track-One filing, the PTO issued the first office action within three months of filing of the non-provisional application.

There may be interesting issues raised in the case. My understanding is that the utility application includes some amount of disclosure and claim structure not found identically in the original provisional applications.  After the provisional was filed but before the non-provisional filing, the patentee admittedly (1) “began taking steps to manufacture the Bunch O Balloons product using certain Chinese contractors. The first batch of product was manufactured [and sales began] in June 2014.”  In addition, the patentee publicly launched a successful Kickstarter campaign prior to the non-provisional filing.  A number of questions arise if we assume (or it turns out) that those disclosures included information different from the provisional application.  Will the Chinese-contracting, delivery, and sales count as prior art under 102(a)(1); and are the disclosures covered by the grace period found in 35 U.S.C. 102(b)(1)?

= = = = =

35 U.S.C. 102

(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 before the effective filing date of the claimed invention …

(b) EXCEPTIONS.– (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.–A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if– (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

= = = = =

Another AIA-patent case captioned Likwid Concepts v. Linzer (D.N.J.) was voluntarily dismissed without prejudice.  (U.S. Patent No. 9,084,474).

Grace Period Restoration Act of 2015

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In the move to a first-to-file patent system, the U.S. narrowed its pre-filing grace period previously codified under 35 U.S.C. 102(b)(2010).  The new law enacted as part of the Leahy-Smith America Invents Act (AIA) continues to permit a one-year grace period but limits the scope of coverage only to a pre-filing “disclosure . . . of a claimed invention” (A) “made by the inventor or joint inventor or by another who obtained the subject matter directly or indirectly from the inventor” or (B) made subsequent to an (A) disclosure.  35 U.S.C. §102(b)(1)(A) and (B)(2015).  There are a number of questions up for interpretation regarding the AIA grace period. Examples: Does the grace period apply when the inventor’s initial disclosure is slightly different than the invention being claimed? Does the grace period apply when a third party publishes a modified version of the inventor’s original disclosure?

The proposed Grace Period Restoration Act of 2015 (H.R. 1791 / S. 926) is designed to “correct the drafting problem in the Leahy-Smith America Invents Act relating to the grace period.”  In particular, the bill would add a new section 102(b)(3) that creates a stronger first-to-disclose system.

The general hypothetical setup here is that we have a pending patent application or perhaps an issued patent (the claimed invention) that is being challenged based upon prior art whose effective date is less than one year before that of the claimed invention in question.  Pre-AIA, the applicant might be able to negate the that reference by showing prior-invention through a process often termed “swearing behind” the asserted art. However, under a first-to-file system, invention-date is no longer directly relevant.

The proposed AIA-amendment here would allow the patentee to negate the prior art so long as the claimed invention had been previously – but still within the one-year timeline – “publicly disclosed in a printed publication by a covered person in a manner that satisfies the relevant section 112(a) requirements.”

Thus, if the inventor (1) first discloses the invention in a way that satisfies the enablement and written description requirements of section 112(a) and (2) subsequently files the patent application within one-year of the disclosure; then the inventor will be immunized against any prior art whose effective date follows that disclosure.  To be clear here, the immunizing would require “public disclosure in a printed publication” and could either be done by an inventor or someone who obtained the information an inventor (either directly or indirectly).

The proposed language:

102(b)(3)(b) PUBLIC DISCLOSURE.—A disclosure by any person shall not be prior art to a claimed invention under subsection (a) or section 103 if

(i) the disclosure is made under subsection (a)(1) or effectively filed under subsection (a)(2) 1 year or less before the effective filing date of the claimed invention; and

(ii) before the disclosure described in clause (i) is made or filed, and 1 year or less before the effective filing date of the claimed invention, the claimed invention is publicly disclosed in a printed publication by a covered person in a manner that satisfies the relevant section 112(a) requirements.

Here, I have only excerpted the most relevant portions of the statutory proposal. In his remarks, Professor Hal Wegner has identified the proposed amendment as largely serving the purpose of “expand[ing] the definition of novelty under 35 U.S.C. 102 to roughly 1200 words, an unreasonable mass of verbiage that the sponsors couldn’t figure out.”

As proposed, the new grace period definition serves as a layer in addition to the grace period already available under 102(b).  The grace period already in existence is narrower in some ways but broader in others.  For instance, the triggering initial public disclosure need have been disclosed in a printed publication.

Time will tell whether the proposal has legs. It it does, I hope that we will first see a less cumbersome rewrite.

Grace Period Restoration Act of 2015

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by Dennis Crouch

Perhaps the greatest impact of the shift to a first-to-file system is that the US’s traditional one-year grace period has been greatly reduced.  Prior to the America Invents Act (AIA), it was fairly straightforward process for patent applicants to take advantage of a one-year pre-filing grace period – with the basic result of negating would-be prior art created in the one-year time period prior to filing.  Under the AIA, a grace period still exists, but only as to pre-filing disclosures either (1) made by (or derived from) the inventor or (2) subsequent to a prior disclosure by or from the inventor.  This means that – under the AIA – a third-party disclosure made even one-day before your patent application filing date will normally negate your patent.  From an international comparative law framework, the AIA grace period is still more forgiving than that of most other countries whose grace period only applies when an invention is disclosed pre-filing through malfeasance such as theft or fraud.

I should note here that the particular scope of the grace period under the AIA is somewhat unclear and will require interpretation by the courts. A reasonable reading of the statute would have the potential of greatly narrowing and limiting grace period so as to make it essentially ineffective.

Universities and independent inventors have pushed to restore the grace period to its prior expanse.  Because these entities tend to lack fully-internal product development and funding regimes, they typically look to make pre-filing disclosures in order to at least test the waters of economic and practical viability.

Taking a middle ground, a bipartisan set of Senators and Representatives have proposed the Grace Period Restoration Act of 2015. [Senators Tammy Baldwin (D-WI) and David Vitter (R-LA), along with United States Representatives Jim Sensenbrenner (R-WI) and John Conyers, Jr. (D-MI)].

I have not yet seen the text of the proposal, but the basic idea is that the amended statute would not fully restore the grace period to pre-AIA days but would clarify the AIA grade period in the following ways:

  • Clarify that no pre-filing disclosure by the inventor within the one-year will jeopardize patentability either on anticipation or obviousness grounds
  • Clarify that the inventor’s pre-filing disclosure of the invention in a printed publication (within the one year grace period) immunizes the application any subsequent disclosure by a third-party.

The proposal here is being framed as fixing an unintended error in the AIA, and I think that is a largely correct historical statement and that there may be support from leaders in both the House and Senate. However, there will be push-back by those who (1) prefer a system better harmonized with the rest-of-the-world and (2) prefer a system where it is easier to invalidate a patent.

Guest Post: Knowing what is Known and Knowable

Patent,

Guest post by Professor Sharon K. Sandeen

For several years now, I have been thinking about how the changes that the America Invents Act (the AIA) wrought to the definition of prior art will change trade secret practice. Specifically, were they intended to narrow the definition of prior art in ways that would make it easier for inventions to be kept as trade secrets and used commercially without triggering the one-year grace period in which to file a patent application?

My initial interest in this topic was sparked by the noticeable deletion of the word “known” from section 102. Former section 102(a) used to state that “[a] person shall be entitled to a patent unless the invention was known or used by others in this country. . . before the invention thereof by the applicant for patent.” Most of the language of “old” section 102(a) is now in “new” section 102(a)(1), but not the word “known.” Also, what is to be made of the added phrase “otherwise available to the public.”

To date, the debate about whether the AIA intended to narrow the definition of prior art in ways that would heighten the ability of inventors to protect their inventions as trade secrets has focused on the meaning of “public use” and whether the phrase “otherwise available to the public” is a new category of prior art or was intended to modify the other listed categories. This makes sense when you consider that the previous “known” category focused on what others knew at the time of the invention, and the issue of whether the grace period is triggered concerns the acts of inventors. Thus, one way to look at the deletion of “known” is to realize that new section 102 simplified things by removing the only type of prior art that applied to “others” but not to the inventor. Now, all the categories of prior art listed in section 102(a)(1) apply to acts of others and inventors, and section 102(b) focuses on the acts of inventors.

I want to suggest another way of looking at the new section 102 and the deletion of the word “known” that helps make sense of both section 102(a) and 102(b). Under well-established trade secret doctrine, the prior art that prevents information from qualifying as a trade secret is expressed as that which is “generally known” and “readily ascertainable.”  What is generally known is broadly defined to include what is known to the general public and what is known within discrete industries or groups of individuals who are experts in the field. Information is readily ascertainable if, even though it is not generally known, it can be found without much time, trouble or expense. Among trade secret scholars, we say that the difference is between what is “known” to the public and what is “knowable.”

Applying the categorizations of “known” and “knowable” to the AIA, it can be seen that new section 102(a) refers to what is knowable. What is stated in a patent or a printed publication or what is in use or on sale, is probably not generally known, but it is readily ascertainable. Read this way, the phrase “otherwise available to the public” makes perfect sense because it captures the essence of the other listed categories and establishes that any information that is ascertainable before the effective filing date would constitute prior art. How readily available the information must be is an question that the AIA does not address directly and that will have to be determined by the courts.

Applying the trade secret concept of “known” to new section 102(b) helps make sense of the language of 102(b)(1)(B) which refers both to “the subject matter that was disclosed” and information that was “publicly disclosed” before such disclosure and, in a round- about way, establishes that section 102(a) does not require information to be generally known by the public. The language “the subject matter that was disclosed” must mean the information that is listed in section 102(a) which only needs to be “knowable.” Information that is “publicly disclosed,” in contrast, means information that was actually disclosed to the public (i.e., “generally known” in trade secret parlance).

UseNet is Prior Art

Anticipation, Novelty, Patent, Prior Art

By Dennis Crouch

Suffolk Tech v. AOL and Google (Fed. Cir. 2014)

This is a prior art case. Suffolk’s patent application was filed back in 1996, but it turns out that the invention was described in a 1995 UseNet newsgroup post posted by a college student. The question on appeal is whether that posting counts as prior art under 35 U.S.C. 102(a) (pre-AIA).

Under the statute, a patent is invalid if “(a) the invention was … described in a printed publication … before the invention thereof by the applicant for a patent.” Courts have repeatedly found that online content fits within the definition of printed publication. Rather, the touchstone question is whether the material was sufficiently publicly accessible. Public accessibility looks to the ability of persons who would be interested or skilled in the subject matter to locate the reference using only reasonable diligence. If a reference is sufficiently disseminated at time of original publication then the ability to later locate the reference is irrelevant.

Today, UseNet materials are indexed by various search engines and would clearly be considered prior art. In 1995 the indexing was not so strong, but the appellate panel here affirmed that the postings clearly fall within the scope of printed publications. For that legal conclusion, the court relied upon a handful of facts:

  • The record indicated that those of ordinary skill in the art were using the UseNet newsgroups in 1995, including Suffolk’s own technical expert.
  • Although not fully indexed, the UseNet group was structured in a hierarchical manner that would have allowed someone interested in the topic to identify the particular group and read the posts.
  • The post in question resulted in at least six responses in the week following the publication – indicating that the post was likely sufficiently distributed at publication.

Invalidity affirmed.

The case was discussed in an earlier Patently-O Posting titled Structuring a Privateering Contract (2012).

= = = =

Note – although this case was decided under pre-AIA rules, its holding should apply equally to the restructured Section 102 that also identifies “printed publications” as a form of prior art.

Patent

Under the AIA,

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 before the effective filing date of the claimed invention; or (2) the claimed invention was described in a patent … or in [a published] application … [that] names another inventor and was effectively filed before the effective filing date of the claimed invention.

35 U.S.C. 102(a) (2013).

The USPTO is now examining patents under this new standard. I would love to see a real world example of this law being applied in a way shows the difference between our new filing-date focus and the old invention-date focus. crouchdd@missouri.edu

Why Section 101 is Neither a “Condition of Patentability” nor an Invalidity Defense

Ethics, ,

I raised this up a year or two ago, but what the heck…  Here's a fuller statement.

The Supreme Court was wrong to read 101 to limit eligible subject matter.  Although it has done so for 50 years, it has never analyzed the statutes closely.  Further, only in the last few years (Prometheus onward) has it held that lack of eligible subject matter is a defense to an issued patent.  This holding is clearly wrong.  Competent lawyers need to raise this issue (how's that for my ethics hook?).

What is now in 101, 102, and (implicitly) 103 was prior to 1952 in one section, 4886. It provided:

 Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof, or who has invented or discovered and asexually reproduced any distinct and new variety of plant, other than a tubor-propagated plant, not known or used by others in this country, before his invention or discovery thereof, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, or more than one year prior to his application, and not in public use or on sale in this country for more than one year prior to his application, unless the same is proved to have been abandoned, may… obtain a patent….”

Congress created a commission in 1948 to study the definition of “invention” applied by the Supreme Court, and also, more importantly, the holding of In re Thau, which in dicta stated that a process using an old composition of matter was not eligible for patenting.  See also 100(b), quoted below.  (Thau involved poorly drafted claims. Long story.)  Congress wanted to reject Thau and make it clear that, while a product claim to an old material was not patentable, a process claim using an old material was eligible for patenting. In other words, Congress set out to broaden section 101 to overrule Thau and to eliminate subjective tests of "invention" that the Supreme Court had made up in the years leading up to 1952.  See the materials cited in Chief Judge Rader's opinion in CLS Bank.

This culminated in 1952 legislation. The text of what became 100(b), 102, and 103 were developed, and Congress expressly split 101 away from the conditions of patentability it put into 102 and 103:

Pre-1952 Section 4886

1952 Patent Act

“Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof, or who has invented or discovered and asexually reproduced any distinct and new variety of plant, other than a tubor-propagated plant, not known or used by others in this country, before his invention or discovery thereof, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, or more than one year prior to his application, and not in public use or on sale in this country for more than one year prior to his application, unless the same is proved to have been abandoned, may… obtain a patent….”

100(b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

 

101 Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

 

 

102 “conditions of patentability”

 

103 “conditions of patentability

 

282 – defenses include “conditions of patentability" in Part II of Title 35, section 112, and some other defenses, including equitable defenses.  Section 101 is not listed and is not a “condition of patentability.”

Congress indisputably did not want any distinction between “invention” and “discovery” to be relevant.  It wanted a process claim that happened to use something old to be a "process."  It wanted clarity and an objective test (this drove adoption of 103) as to "inventiveness."

Now to run through it. Here is why I believe Congress did not want "violations" of Section 101 to be either conditions of patentability or a defense to infringement of an issued patent.  Starting with the plain text, Section 282 is states that “conditions of patentability” in part 2 of Title 35 are defenses.  While in Part 2, section 101 is not labeled as a “condition of patentability:” only 102 and 103 are.  (112 is set forth in mandatory terms, unlike 101 which says “may,” and section 112 is referred to in Section 282, as are some equitable defenses).  Further, there are glaring textual differences between 101 and 102/103/112:

  •  102/103:  There is no burden of proof in Section 101 on the patent office to grant unless the claim is to unpatentable subject matter, unlike 102/03, which require PTO to grant unless it establishes that the claimed invention is not new/nonobvious.
  • Finally, and I think tellingly, all section 101 does is say that someone who invents a new/useful thing can go get a patent if they want to.  That's it. It doesn't even say the PTO can only issue patents on processes/products/etc.  That's not what it says.  Read it.

The legislative history and drafter/leader comments show 101 is not an invalidity defense because it is not a “condition of patentability:"

  •  Earliest bill explained that the original statute, 4886, was being “split into two sections, section 21 relating to the subject matter for which patents may be obtained, and section 22 relating to the conditions under which a patent may be obtained.”
  • S Rep.:  “Section 101 sets forth the subject matter that can be patented, ‘subject to the conditions and requirements of this title.’  The conditions under which a patent may be obtained follow, and section 102 covers the conditions relating to novelty.” 
  • S. Rep:  “The… definition [of process in 100] clarifies the status of processes or methods which involve merely the new use of a known process, machine, manufacture, composition of mater, or materials; they are processes or methods under the statute and may be patented provided the conditions for patentability are met.” 
  • S. Rep. testimony of Federico:  “Now, under section 101 a person may have invented a machine or a manufacture, which may include anything under the sun that is made by man, but it may not necessarily be patentable unless the conditions of patentability are fulfilled.” (I.e., something is an invention but may not be new or nonobvious; but whether it is an "invention" is not an issue.)
  • Giles Rich 1960: “Section 101 lays down, too, with respect to all categories of patentable inventions, the basic requirements of novelty and utility…. Sections 102 and 103 both have headings which commence with the words ‘Conditions for Patentability.”
  • Federico:  Section 4886 had “specified the subject matter for which a patent could be obtained and recited conditions for patentability.  In the new code, this section has been divided into two sections, section 101 relating to the subject matter for which a patent may be obtained, and section 102 which defines statutory novelty and states other conditions for patentability.”

 Further, the language of 101 concerning processes was amended in substantial part to overcome court decisions that had construed “invention” in 4886 to mean that methods applying old and well known materials, processes, or devices to new uses were not patentable methods (E.g., In re Thau).  There was no concern whatsoever about 101 being too broad and patentable subject matter needing to be restricted.  In fact, a proposed narrowing of the concepts now in 101/100(b) was not adopted.

 

 

Whether Prior Art Should be Presumed Enabled

Patent, ,

Finjan v. Rea (Supreme Court 2013)

In its recently filed petition for certiorari, Finjan asks the court to determine whether "prior art should be presumed enabled" when being applied during prosecution before the United States Patent and Trademark Office. The Government's response in opposition alters the question somewhat by asking "Whether, in proceedings to determine whether a patent application should be granted, the [USPTO] bears the burden of demonstrating that a prior art printed publication that anticipates the invention for which the patent is sought enables a person of skill in the art to practice the invention."

The PTO Argues:

The presumption of enablement is consistent with the general rule that the examiner need not raise and explain every possible issue surrounding each ground of rejection. Because the primary purpose of the prima facie showing is to provide notice, an examiner "is not required to anticipate every possible response to a rejection, including showing that a cited reference is enabling." Antor. When an examiner identifies anticipation as a ground of rejection, that notification informs the applicant that he may raise lack of enablement in his response.

The presumption of enablement also reflects the Federal Circuit's recognition that requiring the examiner preemptively to make the detailed findings necessary to verify enablement would be "manifestly inefficient," "burdensome," and "entirely unnecessary." Jung. Because the enablement inquiry requires an analysis of the degree of experimentation necessary to implement an invention, "an examiner, who has no access to experts or laboratories, is not in a position to test each piece of prior art for enablement in citing it, and requiring him to do so would be onerous, if not impossible." Antor. … The applicant is better positioned than the PTO to gather evidence supporting his contention that the prior art is not enabling.

The New Law Effective Today: 35 U.S.C. 102

Patent, ,

By Dennis Crouch

Consider the text of new 35 U.S.C. §102.

(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 before the effective filing date of the claimed invention; or

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122 (b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

(b) Exceptions.—

(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.— A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

(2) Disclosures appearing in applications and patents.— A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—

(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

(c) Common Ownership Under Joint Research Agreements.— Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—

(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;

(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(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.

35 U.S.C. §103

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

= = = = =

Notes of Import:

  1. Prior art is now keyed to the effective filing date of the application-in-question and – except for grace period and derivation purposes – dates of conception and reduction to practice are no longer relevant.
  2. The fact that someone else invented your idea first (or something similar to your idea) is irrelevant except in the limited case of a derivation proceeding. Rather, what matters in the general case is whether that other party created prior art. (Prior commercial users will have limited prior user rights.)
  3. On sale and public use activities are no longer limited to activities within the US. Rather, those elements can be proven with prior art arising from any region of the world.
  4. The USPTO has interpreted "on sale" activity of 102(a)(1) to be limited to public sales or public offers for sale. That interpretation eventually be challenged in court, though the challenge will likely take several years. That shift is a change from our prior understanding of on sale activity.
  5. Under the 102(b) grace period, the law indicates that pre-filing disclosures "of the claimed invention" by the patent applicant will not serve as prior art against the inventor own later-filed patent as long as the application is filed within one year. Despite that "claimed invention" language, the USPTO has stated that the safe-harbor will work to disqualify all inventor-disclosed subject matter, even if the disclosure only suggests portions of the invention or motivations behind the invention. Of course, care should be taken with a publish-early strategy because that publication will likely negate the possibility of non-US patent rights covering the subject matter disclosed.
  6. A prior-filed US patent application will continue to serve as prior art once it is either published or patented and will have a prior art date of its earliest priority filing date that includes the relevant disclosure. Foreign applications will only count as prior art as of their publication date unless versions of those applications are filed in the US. Thus, an ordinary published Japanese patent application will be considered prior art in the US as of its publication date. However, if a US application is filed that claims priority to that Japanese application then the US application (once it publishes) will be considered prior art as of the date that the Japanese application was filed.
  7. Large companies who file many patent applications receive additional relief from their own prior art under 102(b)(2)(C) and 102(c). Basically, a company's prior filed patent application will not count as prior art (for any reason) against the company's later-filed application so long as the prior application has not published or issued by the filing-date of the later application. Further, if the later-filed application was developed as part of a joint research agreement then the law will negate the prior art status of prior filed applications of any of the parties to the joint research agreement (so long as the prior applications were unpublished as of the filing-date of the later-application).

IP Rights Won’t Stop the Election: Federal Circuit Rules that Florida Voting Machines do not Infringe Patentee’s Exclusive Rights

Patent,

By Dennis Crouch

Voter Verified v. Premier Election Solutions and Diebold (Fed. Cir. 2012)

On the eve of the 2012 US Presidential Election, the Federal Circuit has released its opinion affirming two Florida district court judgments that 93 of Voter Verified’s asserted patent claims are invalid and the one remaining claim is not infringed by either that the remaining are not infringed by the automated voting systems sold by Premier Election Solutions and Diebold. This result rescues the court from deciding whether injunctive relief to stop voting in Florida would be against the public interest. See eBay v. MercExchange, 547 U.S. 388 (2006)

The asserted patent was originally filed as a patent application in December of 2000 in the wake of the Bush-Gore election debacle in Florida. The patent lists two inventors, including patent attorney Anthony Provitola who prosecuted the patent and litigated the case. The basic idea of the invention is to print a paper copy of the electronically-entered vote and then using the paper copy to verify that the recorded information is correct. See RE40,449.

The decision includes two topics for discussion:

Internet postings as prior art: One prior art reference used to invalidate various claims came from an online posting available through the niche website “Risks Digest.” There was clear evidence of its posting date, however, the patentee argued that the posting did not qualify as a “printed publication” under Section 102(b) because it was not sufficiently accessible to the public interested in the art by the critical date. Rejecting that criticism, the Federal Circuit noted that proof of indexing is not a requirement. Rather, what is necessary is proof that the reference was “available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” (Quoting SRI v. ISS and Bruckelmyer). Applying a totality-of-the-circumstances approach, the court found that availability was proven by the facts that: the reference was available online before the critical date; the site was well known to relevant individuals (those concerned with electronic voting technologies); by the critical date the site included more than 100 electronic voting articles; users of the site consider submissions to be public disclosures; and the site includes an internal search engine that would retrieve the prior art article based on searches for “voting” or “election.”

Joint Infringement: Some of asserted method claims required action by multiple parties (including “the voter”) that could potentially be actionable under Akamai Technologies, Inc. v. Limelight Net­works, Inc., 692 F.3d 1301 (Fed. Cir. 2012) (en banc). However, the appellate panel found that the patentee had waived that argument at the trial level and could not raise it on appeal even though the law has changed in the interim.

Of note, in Akamai the en banc Federal Circuit focused exclusively on indirect infringement and expressly refused to comment on whether prior panel decisions had unduly narrowed the scope of direct infringement. However, the court did vacate the panel decisions in Akamai and McKesson. Here, however, the court falls back on the still-standing precedent in the parallel decision of BMC and Muniauction to limit the scope of direct infringement liability only to cases where the accused direct infringer “either performs every step of the claimed method or exerts ‘direction or control’ over any such steps performed by others.” Since control of “the voter” would be akin to voter fraud, the court here held that no such direct control exists.

Don’t forget to Vote. Below is a photo of Obama that I posted back in 2004 when he was running for senate and voting near my home in Hyde Park (Chicago), IL.

Notes: Just to clear up any confusion from my reference to eBay above, there is no chance that the Federal Circuit would have ordered an injunction to stop the election even if the devices were infringing VV’s exclusive patent rights.

Did the AIA Eliminate Secret Prior Art?

Patent, , , ,

In many ways, prior art is the core of the US patent system. Patentability requires that any invention-to-be-patented be “new” as defined by 35 U.S.C. §§ 101, 102, and 103. Prior art serves as the underlying evidence to prove that the invention is not new. As implied by its name, prior art has a temporal aspect in that the “prior art date” must come before (i.e., be prior-in-time to) the critical patentability date of the invention in question. Sometimes, the identical invention is found within a single prior art reference. In that case, the newness doctrine of “novelty” as defined by 35 U.S.C. § 102 will do the invalidating work. However, more often than not, a prior art reference will only teach a portion of the purported invention. In that case, the prior art may still serve a useful roll when applying the obviousness doctrine defined by 35 U.S.C. § 103.

We’ve talked about two key features of prior art: (1) being earlier in time and (2) teaching some aspect of the invention being claimed. Those two elements are never sufficient to satisfy the evidentiary requirements of prior art. Rather, the law always requires one additional element to take this information from being merely prior private knowledge to being prior art. As part of the America Invents Act move to a first-to-file regime, this additional step will always involve (3) transferring knowledge.

One argument favoring a first-to-file regime is its focus on publicly available information rather than privately held knowledge. And, in most cases, the step of transferring of knowledge highlighted above is a public act. Thus, prior art may be created through publication, patenting, or public use. 35 U.S.C. § 102(a)(1) (post-AIA). The AIA retains one form of temporally-secret prior art in that the prior filing of a patent application by “another inventor” will be deemed prior art as of its filing date. 35 U.S.C. § 102(a)(2) (post-AIA; formerly defined by § 102(e)). This is secret prior art because patent applications are typically kept secret by the USPTO for 18-months after they are filed. However, I term § 102(a)(2) prior-art-as-of-filing-date as only temporally (or temporarily) secret because such a reference cannot be used as prior art unless and until the prior-filed application is made public through either publication or patenting. Perhaps because of the unfairness of associated with its secrecy, most other countries besides the US only allow this type of prior art for novelty arguments and not for questioning obviousness (inventive step).

The AIA did eliminate several types of secret of prior art, including prior secret invention by another inventor under pre-AIA § 102(g) and prior knowledge transferred from another to the patent applicant under pre-AIA § 102(f). The individualized secrecy of these prior art references created two main problems: (1) that patentability could not be fully evaluated with going through the arduous process of obtaining additional information from interested parties and (2) that the secrecy gave interested parties more of an opportunity to fraudulently create (or destroy) documents after-the-fact. Making patentability based upon publicly available information can hypothetically lead to some unjust outcomes, but it has the enormous benefit of providing clear(er) notice to anyone who cares to look.

Two important secret prior art questions remain — namely whether either (1) secret commercial uses (by the patentee) or (2) secret on-sale activity (by anyone) create prior art that can invalidate a patent on novelty grounds and contribute to invalidation on obviousness grounds. The Patent Act never expressly authorized the first type of prior art and has arguably now rejected the second. Advocates for a transparent prior art system argue that the AIA should be interpreted as eliminating both.

Secret Sales: One type of prior art that is traditionally thought of as potentially secret is created by what is known as the on-sale bar. An invention that is on sale before the critical patenting date will result in prior art that renders any patent invalid. There are a few ways that a sale or offer-to-sell could be secret: for example, (1) it might be an offer between two individuals that is subject to a (formal or informal) confidentiality agreement or (2) it might be an offer that does not fully disclose the scope of the invention.

The AIA retains the identical language of its predecessor statute regarding on sale activity that occurs prior to the defined critical date. Compare 35 U.S.C. § 102(a)(1) (post-AIA) with 35 U.S.C. § 102(b) (pre-AIA). Although the “on sale” term itself is identical, the context of the new statute is arguably different. In particular, the new statute has added a catchall phrase “otherwise available to the public” that suggests that the on-sale activity must also be available to the public. The new statute reads as follows:

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 before the effective filing date of the claimed invention; or …

The open question is whether the language here creates a legally cognizable implication that the “on sale” activity must be available to the public as well.

Secret Commercialization by the Patentee: In his 1946 decision in Metallizing Engineering, Judge Learned Hand explained that a patentee’s commercial use of its process (even if done secretly behind factory walls) counted as a “public use” sufficient to invalidate the later-filed patent application. The court wrote “That it is a condition upon an inventor’s right to a patent that he shall not exploit his discovery competitively after it is ready for patenting; he must content himself with either secrecy, or [a patent].” Under the rule, secret commercial uses of an invention by a third party does not count as a public use. This distinction is found nowhere in the patent statute, but has been judicially recognized for many years. While the new statute retains the “public use” language, many suggest that a strong congressional intent that the new statute eliminate the Metallizing rule.

USPTO Proposed Interpretation: In a set of proposed examination guidelines, the USPTO indicated its interpretations that the statute has altered these provisions in favor limiting the application of secret prior art. In particular, the USPTO’s position is that, while the statute is not entirely clear on these points, the legislative history indicates that that prefiling secret sales and commercial uses do not qualify as prior art under the revised Section 102. The PTO writes: “The legislative history of the AIA indicates that the inclusion of this clause in AIA 35 U.S.C. 102(a)(1) should be viewed as indicating that AIA 35 U.S.C. 102(a)(1) does not cover non-public uses or nonpublic offers for sale.

For the most part, patent attorneys appear to agree with the USPTO’s proposals. The American Bar Association’s IP Law Section writes:

ABA IPL respectfully submits that the passage “otherwise available to the public” reflects the touchstone of what constitutes prior art under the AIA under section 102(a)(1). This section requires availability to the public or public accessibility is an overarching requirement. Such accessibility is critical to provide a simpler, more predictable and fully transparent patent system. As such, for a “public use,” for a determination that an invention is “on sale,” as well as to assess whether an offer for sale has been made, the statutory requirements under the AIA require a public disclosure. Thus, non-public offers for sale (and non-public uses) would not qualify as prior art under the AIA.

The AIPLA agrees, writing:

AIPLA believes that an offer for sale needs to be public to qualify as “on sale” prior art under §102(a)(1). . . . AIA §102(a)(1), unlike pre-AIA 35 U.S.C. §102(b), contains the residual clause “or otherwise available to the public.” This is a major policy change achieved by the new legislation, which would further the goal of increasing objectivity in the identification of prior art. . . .

[T]he legislative history of the AIA indicates that the inclusion of this clause in §102(a)(1) should be viewed as indicating that §102(a)(1) does not cover non-public uses or non-public offers for sale. AIPLA believes that such an interpretation reflects the clear intent of Congress. It is also consistent with the broad goal of global harmonization under a first-inventor-to-file system.

The IPO agrees as well – arguing in its comments to the USPTO that the AIA “overrules Metallizing Engineering by excluding ‘secret’ commercial activity from the ‘on sale’ provision” and that the only on sale activity relevant to patentability under the AIA is when an invention is “publicly on sale.” LES is also on board with this interpretation.

Several individuals disagreed, including Lawrence Pope who wrote:

Certainly, any change in patent law which abandoned a long established policy and allowed inventors to engage in secret commercial exploitation of their inventions for as long as they liked without forfeiting their right to obtain valid patent protection on the same, would require quite explicit statutory language. In addition, it would be expected that any such major change would be reflected in a more extensive legislative history than the mere comments of two members. One would at least expect to see it reflected in the Committee Report reporting on the legislation to the House of Representatives.

Mark Lemley also argued that the PTO’s interpretation is quite problematic:

[T}he proposed Guidelines take the position that the AIA has reversed an unbroken line of precedent of both the Federal Circuit and the regional circuits tracing back to Judge Learned Hand’s decision in the Metallizing case. Those cases hold — for impeccable policy reasons — that the term “public use” in old section 102(b) should be interpreted to prevent an applicant from making a secret commercial use for more than a year while delaying the filing of a patent application. A contrary conclusion, as the PTO now proposes, will enable inventors to keep their process inventions secret for years or even decades, and then surface and file a patent application. That is directly contrary to the goals of first-inventor-to-file in the AIA, which encourage early filing of patent applications.

Concluding that Metallizing and the cases that follow it were abrogated will have another, even more pernicious effect. Metallizing, Gore v. Garlock, and other cases interpret the term “public use” in the old statute. One might reasonably conclude that those cases stretch the meaning of that term, but what the courts said they were doing was interpreting “public use.” The term “public use” appears unchanged in new section 102 under the AIA. For the PTO to conclude that the new law opens the door to reinterpretation of the settled meaning of terms present in both the old and new statutes opens a dangerous door. Parties and courts might be expected to try to revisit the meaning of “on sale,” “patented,” “printed publication,” and many other settled statutory provisions, creating enormous uncertainty. To take just one example, the inherency doctrine, like the Metallizing rule, is not articulated expressly in either the old or new statute. If the reenactment of the term “public use” opens the door to revisiting Metallizing, it also opens the door to revisiting inherency, the “ready for patenting” rule in on sale bar, and a host of other settled cases. The PTO, patent applicants, and litigants would be much better served by leaving existing precedent interpreting unchanged statutory terms in place.

Read more comments here: http://www.uspto.gov/patents/law/comments/. (Note, the equally major issue is the USPTO’s interpretation of the disclosure grace period that is also part of the commentary).

What’s the Big Deal?: The USPTO does not have substantive authority to shape the interpretation of 35 U.S.C. § 102. In the end, this issue will be resolved by the courts or else clarified by Congress in a technical amendment. In many ways, the arguments above are simply a preview for a Federal Circuit and Supreme Court ruling on the issue. One problem with the USPTO’s narrow view of the prior art is that it delays the eventual resolution of this issue since it gives patent applicants nothing to challenge. In any event, this is a debate that will continue for at least the next decade and likely beyond.

Is the New Supplemental Examination a Complete Replacement for Owner Initiated Ex Parte Reexamination?

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By Dennis Crouch

This essay focuses on supplemental examination but, perhaps surprisingly, the essay does not consider inequitable conduct inoculation. The ability of supplemental examination to cure inequitable conduct has received a significant amount of attention. However, supplemental examination is likely to have a broader value for patent owners. In particular, supplemental examination offers an expanded and beneficial avenue for patent owners to subtly enter ex parte reexamination. In its official estimates, the USPTO predicts that patent owners will entirely stop filing ex parte reexaminations. Rather, in the USPTO’s estimation, 100% of the cases that would have been filed as owner-filed reexaminations will now be filed as supplemental examinations. The USPTO writes:

[T]he Office estimates that it receives approximately 110 requests for ex parte reexamination filed by patent owners annually. In view of the benefits to patent owners afforded by supplemental examination under 35 U.S.C. 257(c), the Office is estimating that all 110 requests for ex parte reexamination that would have been filed annually by patent owners will instead be filed as requests for supplemental examination. However, the Office is also estimating that more than 110 requests for supplemental examination will be filed annually due to a combination of: (1) the benefits to patent owners afforded by supplemental examination; (2) the fact that the “information” that may form the basis of a request for supplemental examination is not limited to patents and printed publications; and (3) the fact that the issues that may be raised during supplemental examination may include issues in addition to those permitted to be raised in ex parte reexamination (e.g., issues under 35 U.S.C. 112).

See Changes To Implement the Supplemental Examination Provisions of the Leahy-Smith America Invents Act and To Revise Reexamination Fees; Final Rule, 77 Fed. Reg. 48827 (2012). Although not suggested by the USPTO, there is some thought that the supplemental reexamination will also take some demand away from the current reissue system.

As a starting point on this topic, it is useful to remember that ex parte reexamination has been left virtually unchanged by the America Invents Act (AIA). The greatest exception is not a process change but rather a seven-fold increase in the price-tag for filing a request for ex parte. This takes the price from $2,500 to almost $18k. Ex parte reexaminations will still be conducted by examiners in the central reexamination unit (CRU) and the Board (now the PTAB) will handle first level appeals. The AIA “clarifies” the law that adverse decisions from the PTAB may be appealed only to the Court of Appeals for the Federal Circuit and that the patentee has now right to file a civil action in district court to overturn an adverse decision during the reexamination.

The reissue process was also left untouched except that the AIA removes the “without any deceptive intention” language from 35 U.S.C. § 251. The reissue statute now reads as follows:

Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.

However, unlike reexaminations, reissue fees associated with reissue applications have been kept low – remaining mostly equivalent to fees associated with original prosecution. For patents in litigation (or likely to be litigated) the fee differential will be a relatively minor factor in the ultimate choice. However, that fee differential could be quite important for more average patents – those part of a large portfolio but that would become more valuable if given a secondary review. Since this post is getting quite long, I’m going to save the comparison between supplemental examination and reissues for a different post.

Comparing Supplemental Examination with Ex Parte Reexamination: The process of supplemental examination is quite similar to that of ex parte reexamination. You can think of ex parte reexamination as having two main parts: (1) request stage; and (2) examination stage. At the request stage, the USPTO must decide whether the reexamination request raises patentability issues that are significant enough to warrant full reexamination. If the issues presented are not significant enough then the reexamination request is denied and the case is over. However, if the issues are deemed significant then the patent is fully reexamined. That reexamination can result in claims being cancelled, amended, or confirmed as patentable. In many ways, supplemental examination can be seen as simply changing name of the request stage. For supplemental examination, the request stage is the supplemental examination. In that stage, the USPTO is simply conducting a cursory review to determine whether the issues presented in the supplemental examination request raise a substantial new question of patentability. If not, then the supplemental examination is concluded (with a certificate). If substantial questions are raised then a full reexamination is ordered and conducted. As in the request stage of ex parte reexaminations, supplemental examination is completed very quickly (3-months) and without any additional outside input beyond the request itself.

Supplemental examination offers four primary benefits for a patent owner as compared with directly filing a request for ex parte reexamination:

  • When a patent owner files a reexamination request on its own patent, it has to first convince the USPTO that its patent has a problem. With supplemental examination, the patentee need not make any such statement. Rather, the supplemental examination request simply points to material that should be considered with minor explanation and the PTO makes the judgment as to whether the submitted material raises any substantial new questions of patentability. This helps patentees avoid potential prosecution history issues that often trap patentees in the reexamination process. This may also mean that the supplemental examination document request is less expensive to prepare.
  • In ordinary circumstances, Ex parte reexaminations are instituted based upon printed publications or patents. Supplemental examination can be used to raise all sorts of issues based upon “any supporting document” or legal issue (such as patentable subject matter).
  • If the PTO concludes that no substantial question of patentability is raised by the request then, with supplemental examination, it issues a “supplemental examination certificate” that the patentee can take and show to a district court judge and jury. While the decision in supplemental examination is effectively the same as a denial of a request for ex parte reexamination, the cognitive impact is different. In the ex parte reexamination scenario, the PTO merely denied a request to review the case. On the other hand, in the supplemental examination scenario, the PTO actually conducted a supplemental examination; determined that the submitted issues do not raise a substantial question of patentability; and issued an official certificate saying as much.
  • As discussed elsewhere, the supplemental examination also provides the inoculation against inequitable conduct charges.

There are some downsides to supplemental examination, but in most cases it will be a better option when compared with an owner-requested ex parte reexamination.

Supplemental Examination: Inequitable Conduct Amnesty and Beyond

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By Dennis Crouch

Introduction to Supplemental Examination: The new supplemental examination procedure is a creation of the America Invents Act (AIA) and is effective as of September 16, 2012. At its most basic, the new procedure allows a patent owner to seek a low-level review of an issued patent to make sure that it was properly issued based upon some newly submitted information. If – on initial review – PTO agrees that the patent is still viable despite the new information the USPTO will conclude the review and issue a certificate indicating that the information presented in the request does not raise a substantial new question of patentability. On the other hand, if the USPTO finds a substantial new question of patentability, then the USPTO will order a full (ex parte) reexamination.

Inoculating Against Inequitable Conduct: Supplemental examination is often tied to inequitable conduct because the new statute indicates that a patent cannot be held unenforceable for failure-to-disclose (or mis-disclosure of) information during a prior examination once that information is considered in a supplemental examination. Professors Jason Rantanen and Lee Petherbridge have identified supplemental examination as an "amnesty program." They write in the Michigan Law Review that:

New § 257 is thus a patent amnesty program. It encourages patent applicants to use any number of strategies that would never have been countenanced under pre-AIA law to obtain patents, and it offers to cure all but the most extreme through filing a supplemental examination request. For example, potential descriptions of a claimed invention in a prior art printed publication, or possible instances of prior patenting of the claimed invention by another, that are known to a patent applicant, and that might have a high probability of barring a patent or limiting claim scope, may not be disclosed during the initial examination. Similarly, sales and public uses that are known to a patent applicant and that may have a high probability of barring the patentability of a claimed invention may be withheld at least until supplemental examination if the applicant likes (and perhaps longer depending on an applicant's risk tolerance). Even the use of false data to obtain the patent in the initial examination can be exonerated by filing a supplemental examination request, which by the statutorily required process can be expected to produce a director's certificate within three months.

Jason Rantanen and Lee Petherbridge, Toward a System of Invention Registration: The Leahy-Smith America Invents Act, 110 Mich. L. Rev. First Impressions 24 (2011).

To be clear, the strategies identified by Rantanen and Petherbridge would violate the professional ethics of a patent attorney or patent agent who deliberately chose that strategy. The argument here is that the supplemental examination rules (coupled with Theresense, Excergen, and their progeny) provide a marginal incentive to applicants to avoid fully complying with the duties of candor and good faith in all dealings with the USPTO. They write "the analysis provided here relates to the marginal effects of a supplemental examination system." In the end, however, it is unclear whether the new incentive will actually change any behavior. I.e., will the availability of supplemental examination mean that some important evidence will now be buried that would have otherwise been disclosed?

There are two statutory exceptions to the inoculation and both relate to times where the patentee waited too long to request the supplemental examination. The statute labels these prior enforcement allegations and prior allegations. Basically, the supplemental examination (and any subsequent reexamination) must be completed prior to the filing of a lawsuit where inequitable conduct may be raised as a defense. In addition, the supplemental examination must be filed prior to the inequitable conduct being alleged in a pleading or Paragraph IV certification. If the patentee fails either prong then the amnesty fails and a court will have power to adjudge the inequitable conduct.

Timing of Declaratory Judgment Actions: The distinction between the two exceptions can be seen in the context of declaratory judgment (DJ) actions. DJ actions are regularly filed in cases where would-be accused infringers take the preemptive measure of asking a court to declare a patent not-infringed, invalid, or unenforceable. Most (but certainly not all) DJ actions filed in the past few years are primarily venue contests and are filed shortly after the original complementary infringement action.

In thinking about supplemental examination amnesty in the context of DJ actions, it is easiest to begin with the understanding that, with two exceptions, the patent cannot be held unenforceable due to inequitable conduct once the patent properly passes through the supplemental examination amnesty program. In the ordinary infringement litigation filed by the patentee, one of the exceptions block the inoculation in cases where the litigation if filed prior to completion of the supplemental examination. This conclusion is based upon the statutory provision explaining that the inoculation "shall not apply to any defense raised [in infringement litigation] unless the supplemental examination, and any reexamination ordered pursuant to the request, are concluded before the date on which the action is brought." Notice here that the exception to inoculation specifically applies to "any defense." In the declaratory judgment context, the inequitable conduct allegation is not filed as a "defense" but rather as part of the complaint. This means that the § 257(c)(2)(B) exception does not apply to declaratory judgment actions. However, the § 257(c)(2)(A) exception will apply to declaratory judgment actions – leading to the conclusion that supplemental examination will provide amnesty against DJ inequitable conduct actions so long as the request for supplemental examination is filed prior to the filing of a DJ pleading that particularly alleges the inequitable conduct. Here, it appears that to satisfy the filing trigger, the request must meet the requirements set forth in the USPTO's implementation regulations. The USPTO will not grant a filing date to applications that fail to follow those guidelines.

Timing of Supplemental Examinations. In the paragraphs above, I identified instances where the inequitable conduct amnesty is triggered by either the filing of a supplemental examination request or else the completing of the supplemental examination. In many cases, the difference between those two will be minimal. The USPTO has announced its intention to complete all supplemental examination reviews within three months. That interpretation follows the statutory guidance that "Within 3 months after the date a request for supplemental examination meeting the requirements of this section is received, the Director shall conduct the supplemental examination and shall conclude such examination by issuing a certificate indicating whether the information presented in the request raises a substantial new question of patentability." This three-month deadline means that the USPTO will likely be sticklers for the filing requirements and may also mean that the USPTO will frequently order reexamination. The major exception to this quick timeline is that the supplemental examination will not be considered complete for amnesty purposes if a SNQ is raised in a way that triggers the automatic reexamination.

Statutory Provision Section 257: The new supplemental exam procedure is codified at 35 U.S.C. § 257 and reads as follows:

§ 257. Supplemental examinations to consider, reconsider, or correct information

(a) REQUEST FOR SUPPLEMENTAL EXAMINATION.—A patent owner may request supplemental examination of a patent in the Office to consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the Director may establish. Within 3 months after the date a request for supplemental examination meeting the requirements of this section is received, the Director shall conduct the supplemental examination and shall conclude such examination by issuing a certificate indicating whether the information presented in the request raises a substantial new question of patentability.

(b) REEXAMINATION ORDERED.—If the certificate issued under subsection (a) indicates that a substantial new question of patentability is raised by 1 or more items of information in the request, the Director shall order reexamination of the patent. The reexamination shall be conducted according to procedures established by chapter 30, except that the patent owner shall not have the right to file a statement pursuant to section 304. During the reexamination, the Director shall address each substantial new question of patentability identified during the supplemental examination, notwithstanding the limitations in chapter 30 relating to patents and printed publication or any other provision of such chapter.

(c) EFFECT.—

(1) IN GENERAL.—A patent shall not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of the patent if the information was considered, reconsidered, or corrected during a supplemental examination of the patent. The making of a request under subsection (a), or the absence thereof, shall not be relevant to enforceability of the patent under section 282.

(2) EXCEPTIONS.—

(A) PRIOR ALLEGATIONS.—Paragraph (1) shall not apply to an allegation pled with particularity in a civil action, or set forth with particularity in a notice received by the patent owner under section 505(j)(2)(B)(iv)(II) of the Federal Food, Drug, and Cosmetic Act (21 U.S.C. 355(j)(2)(B)(iv)(II)), before the date of a supplemental examination request under subsection (a) to consider, reconsider, or correct information forming the basis for the allegation.

(B) PATENT ENFORCEMENT ACTIONS.—In an action brought under section 337(a) of the Tariff Act of 1930 (19 U.S.C. 1337(a)), or section 281 of this title, paragraph (1) shall not apply to any defense raised in the action that is based upon information that was considered, reconsidered, or corrected pursuant to a supplemental examination request under subsection (a), unless the supplemental examination, and any reexamination ordered pursuant to the request, are concluded before the date on which the action is brought.

(d) FEES AND REGULATIONS.—

(1) FEES.—The Director shall, by regulation, establish fees for the submission of a request for supplemental examination of a patent, and to consider each item of information submitted in the request. If reexamination is ordered under subsection (b), fees established and applicable to ex parte reexamination proceedings under chapter 30 shall be paid, in addition to fees applicable to supplemental examination.

(2) REGULATIONS.—The Director shall issue regulations governing the form, content, and other requirements of requests for supplemental examination, and establishing procedures for reviewing information submitted in such requests.

(e) FRAUD.—If the Director becomes aware, during the course of a supplemental examination or reexamination proceeding ordered under this section, that a material fraud on the Office may have been committed in connection with the patent that is the subject of the supplemental examination, then in addition to any other actions the Director is authorized to take, including the cancellation of any claims found to be invalid under section 307 as a result of a reexamination ordered under this section, the Director shall also refer the matter to the Attorney General for such further action as the Attorney General may deem appropriate. Any such referral shall be treated as confidential, shall not be included in the file of the patent, and shall not be disclosed to the public unless the United States charges a person with a criminal offense in connection with such referral.

(f) RULE OF CONSTRUCTION.—Nothing in this section shall be construed—

(1) to preclude the imposition of sanctions based upon criminal or antitrust laws (including section 1001(a) of title 18, the first section of the Clayton Act, and section 5 of the Federal Trade Commission Act to the extent that section relates to unfair methods of competition);

(2) to limit the authority of the Director to investigate issues of possible misconduct and impose sanctions for misconduct in connection with matters or proceedings before the Office; or

(3) to limit the authority of the Director to issue regulations under chapter 3 relating to sanctions for misconduct by representatives practicing before the Office.

As mentioned above, the effective date of the new supplementary examination procedure is September 16, 2012 and applies to all patents.

Costs and Fees for Supplemental Examination: The USPTO has indicated that its plans are to – for the most part – charge a fee for supplemental examination that is roughly equivalent to its expected cost for conducting the supplemental examination. In a prior post, Professor Rantanen explained: "The cost for filing a supplemental examination request remains steep: $5,140 for the initial request plus $16,120 for the ex parte re-examination fee. Both must be paid at the time of initial request, and the $16,120 will be refunded if no re-examination is ordered." In a proposed change in the fee structure, the USPTO has suggested that it lower the costs by a small amount and also allow for a 50% and 75% reduction in fees for small-entity and micro-entity patent owners. Those new fees will not be effective until early 2013.

Regulatory Process: As instructed by the statute, the USPTO has promulgated a set of rules that more fully govern the process of supplemental examination.

Other Purposes of Supplemental Examination: There are strong suggestions that supplemental examination may be useful outside of the inequitable conduct situation. In particular, patentees may want to ensure that defendants can't argue in court that the best references were never seen by the USPTO. Other patentees may rely on supplemental examination as a mechanism for entering reexamination without having to first admit that something is wrong with the patent. I'll save consideration of these strategies for a later post.

Pre-Issuance Submissions

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Ex Parte Patent Prosecution: Most of the American legal system is designed to operate in an adversarial environment. Each side presents their arguments and pokes holes in opposing arguments. A disinterested judge then considers these arguments and makes a ruling. The system works well because a financial award is typically associated with winning the argument – this aligning of incentives encourages each party to identify and present the best possible arguments to the judge. Patent prosecution does not follow this model – especially at the initial examination stage. Patent prosecution follows an ex parte model where one party (the patent applicant) has a strong interest in receiving a patent but where there is no interested party on the other side. Instead, the patent examiner is tasked with both seeking to identify arguments against patentability and then also determining whether those arguments are sufficient. Interestingly, patentees often argue that this system is problematic because of the potential bias associated with an examiner judging the quality of her own arguments. Third parties who may suffer under the patent rights also argue that the system is problematic – though for a different reason. They argue that the non-adversarial nature of the system means results in insufficient push-back on patentability questions and thus that many patents issue that should not have issued.

Third Party Intervention in the Prosecution Process in the Form of Preissuance Submissions: Up until now, there has been essentially no mechanism for a third party to participate in the original examination of a patent – that is changing (in a minor way) with the availability of third-party pre-grant submissions for pending patent applications. As of September 16, 2012, anyone has standing to submit documents to the USPTO that relate to pending patent applications.

Allowing for the Submission of Any Printed Publication of Potential Relevance: Most commonly, I suspect that applicants will submit prior art that they have identified as relevant to the pending application. However, the new rules allow the submission of any printed publication. In particular, the statute provides that “Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application.” 35 U.S.C. § 122(e)(1). Thus, the printed publication is not limited prior art documents, but could relevant to other questions. Thus, for instance, a dictionary definition could be submitted for the question of indefiniteness; a court decision could be submitted for the question of patentable subject matter; a portion of the MPEP could be submitted on the question of improper revival; etc. The USPTO has suggested in its implementation regulations that documents prepared and published solely for the purpose of a pre-grant submission will not be accepted. I would argue, however, that restriction would violate the law passed by Congress and codified in 35 U.S.C. § 122(e) that only requires the document be a “printed publication of potential relevance to the examination of the application.”

Guiding the Examiner with a Brief on the Merits: An important element of the new provision is that the preissuance submission must be accompanied by a brief explanation of why the various documents have been submitted. This is essentially a brief on the merits or skeleton argument akin to what would be filed by opposing counsel in litigation. As written, the law requires this submission in the form of “a concise description of the asserted relevance of each submitted document.” Thus, the brief might include a table that shows how the prior art relates directly to the invention claimed; explain how a particular term is unduly ambiguous; how already recognized prior art fits the claims; or how a claim as drafted improperly claims an abstract idea or product of nature. Now, to be clear, this is not litigation and is not an inter partes action. Once the documents and brief is filed, the third party no longer has standing to make any statements or arguments on the record. And, attempts to do so will lead to disciplinary action by the OED. That said, it appears that the USPTO is ready and willing to consider briefs that are accurate and get to the point – especially if done in a way that saves examiner time.

Timeline for Submissions: There are some strict guidelines on the timing of preissuance submissions as goverened by §122(e)(1). That statute indicates that the submission must be:

made in writing before the earlier of—(A) the date a notice of allowance under section 151 is [mailed]; or (B) the later of— (i) 6 months after the date on which the application for patent is first published … or (ii) the date of the first rejection under section 132 …

35 U.S.C. § 122(e)(1). Thus, a submission may only be filed after an application is publication and cannot be filed in non-published cases. Unless a patent is issued very quickly, third parties have at least six months from publication to file a preissuance submission. In areas suffering under a long backlog delay, the submission could be filed much later – so long as it is filed before the first action on the merits. Under the USPTO’s implementation regulations, a restriction requirement on its own will not trigger the deadline.

The best practices approach is to identify problematic applications as soon as possible following publication and create conservative docket for filing preissuance submission. Because of the statutory deadline, the PTO has indicated that it is unwilling to grant any extensions of time for delays in filing.

Are you afraid?: Attorneys at Williams Mullen have urged caution to their clients – indicating that:

[I]ssues remain as to whether it is advisable to prepare such submissions due to the deference that can be given to USPTO examination and the potential prejudice to raising the same prior art in a later proceeding. Third party submissions at this stage will require caution and careful consideration before filing. Moreover, it remains unclear as to what effect these submissions will have on the examination of existing applications.

Williams Mullen is correct to urge caution, although I believe it is overstated. My view is that well written briefs submitted with the documentation will likely impact the prosecution by limiting the scope of the claim that eventually issues. This is a free submission that can be done anonymously (although your name would come out in litigation discovery) or through an organization. The most likely potential reward is that the claims will be narrowed before being attached with a presumption of validity that can only be overcome with clear and convincing evidence.

The short statute governing preissuance submissions reads as follows:

§ 122(e) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.—

(1) IN GENERAL.—Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of—

(A) the date a notice of allowance under section 151 is given or mailed in the application for patent; or

(B) the later of— (i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or (ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent.

(2) OTHER REQUIREMENTS.—Any submission under paragraph (1) shall—

(A) set forth a concise description of the asserted relevance of each submitted document;

(B) be accompanied by such fee as the Director may prescribe; and

(C) include a statement by the person making such submission affirming that the submission was made in compliance with this section.

In house attorneys will likely want to try-out a few to test the effect before an important case comes again. Richoh’s App. No. 13/042,288 (Pub. No. 2012-0233658) offers a good place to start. The published application claims:

  1. A method for generating a log of stroke data, comprising:

capturing stroke data from a user that inputs the stroke data into a portable computing device;

identifying a location of the user;

identifying acceleration of the user;

generating a log of stroke data that includes a time of input; and

generating a log of location and accelerometer history.

 

Making Pre-Grant Submissions More Efffective

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by Dennis Crouch

The America Invents Act (AIA) expands the opportunity for third-party pre-issuance submissions in patent cases. Beginning September 16 of this year (2012), anyone will be permitted to submit published documents ('printed publications') that are relevant to the examination of a pending application along with a concise explanation of the importance of the documents submitted. 

In a recently issued set of final rules, the USPTO outlines the procedures that it has put in place to handle the new filings. Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act, 77 F.R. 42150 (2012).

Targeted preissuance submissions offer an extremely inexpensive mechanism for limiting competitor patent scope. The process has little downside (in most cases) but does require additional competitor monitoring.  The effectiveness of the process has not been tested.  Although the process has major limitations, I believe that it will serve as an effective tool in the hands of skilled practitioners.  I have spoken with several attorneys who are already preparing their preissuance submissions to be filed in late September.

Key points: 

  • Implementation: Although the pre-grant submissions cannot be filed before September 16, once that date passes, they may be filed in applications that were already on file with the USPTO. I know of some individuals who are already preparing materials for pre-grant submissions against competitor applications. Presumably they will file those sometime on or after September 16, 2012. 
  • Deadlines: During the legislative process, the PTO supported these third-party submissions, but offered some concern that late-stage submissions could create problems for both patent applicants and for the USPTO examination process.  Thus, for most cases the preissuance submission must be filed before the first office action rejection is mailed.  In cases where there is no office action rejection or where the PTO works quickly, submissions will be allowed if within an alternative deadline of within six-months of publication.  The PTO will not consider any submissions submitted after the notice of allowance.
  • Requirements: Submissions may be done anonymously and electronically, but must include (1) A list identifying the items being submitted; (2) a concise description of the relevance of each item listed; (3) a legible copy of each non-U.S. patent document listed; (4) an English language translation of any non-English language item listed; (5) a statement by the party making the submission that the submission complies with the statute and the rule; and (6) the required fee ($0 if fewer than three-documents submitted).
  • Results: The patent examiner is required to consider compliant third-party submissions in preparation for the next office action.  The submitted documents will be listed on the face of the patent as considered.

How to make preissuance submissions more effective?: Some may have a more nuanced or longer-term strategy, but the usual realistic goal of a third-party submission is to limit the scope of a competitor's pending application.  Barring retaliatory competitor action, the only downside is that a broad patent may still issue with a prosecution history reflecting that the examiner considered the submitted documents.  No estoppel is created by the submissions.  The identical argument will not be available during a later post grant review and may be more difficult to prove at trial than it would have been if never considered at the USPTO.

  1. Quality Art: The best preissuance submissions will begin with on-point prior art.  Examiners will not likely be tolerant of submissions that lack prima facie credibility.
  2. Concise and Well Drafted: There is a large risk of examiners ignoring submissions that appear as a large stack of dense documents.  The concise explanation should be designed to quickly lead examiners to a rejection based upon the submitted documents.   
  3. Explaining Known Art: Rather than submitting new prior art, applicants may re-submit art already in the file along with an explanation of how the art should be applied.   
  4. Reputation: Certain practitioners and entities will earn reputations as filing credible/incredible. 
  5. Protect Potential Space: Remember that the patent applicant is still likely to receive a patent. The pre-issuance submission is useful for limiting and defining patent scope.  The record will reflect that the patent definitely does not cover X.  With the normal unpredictability of claim construction, this defining role result can be quite helpful down the road if the patent is ever litigated.  Practicing entities should use the process to clear a path for their own current and potential technology usage.  As discussed below, a third party may be satisfied with the applicant adding a definition to a claim term rather than actually amending the claim. 
  6. Internal Prior Art: Remember that e-mails and other correspondence can potentially serve as printed publications under the patent laws.  (See caselaw on 35 USC 102(a) & 102(b)).
  7. Other Questions of Patentability: The statute calls for the submission of documents “of potential relevance to the examination” and is certainly not restricted to issues of novelty and nonobviousness.  The rules do not allow an applicant to simply submit an argument without an underlying published document. For a definiteness issue, a dictionary definition may serve as the hook.  For a new-matter question, the document could be the related parent application. For a patentable subject matter issue, the document might be Mayo v. Prometheus.

Arguments Serving as Published Evidence: A third-party challenging enablement might want to hire an expert to study the application; publish an expert report; and then submit the report (along with a concise explanation) following these new procedures.  This approach appears to fit within the statute that allows the submission of “any … printed publication of potential relevance.”  However, in its notice of final rules, the USPTO has indicated that it will not accept materials created and published merely for the purpose of challenging the pending application in question.  The USPTO appears to understand that the statute is broadly written and thus does not directly prohibit the filing of such documents.  The Office instead concludes that the submission would be rejected because the required concise explanation of such a document “would likely be deemed an improper attempt by the third party to impermissibly participate in the examination of the application because the relevance of the document being described is its discussion of the patentability of the application.”  In this sense, the Office seems to be setting up a conflict between these new submission procedures found in 35 USC 122(e) and the prohibition on protests and pre-grant oppositions left unamended in 35 USC 122(c). 

I believe that the USPTO is probably wrong on its analysis of the law here — in many (if not most) cases, this type of evidence should be allowed under the law.  The statute does not provide a particular mechanism for challenging the PTO's refusal to consider these submissions, but the Office is unlikely be convinced on petition without resorting to the filing of a federal case. As an aside, the filing of a non-compliant submission will likely trigger the applicant's duty of disclosure.  In that case, the applicant will likely re-file the submission as part of an information disclosure statement.

Note: Some of these ideas came from reading Hal Wegner's useful report on Third Party Submissions: The Final Rule.