The Increasing Role of Published Applications in Patent Examination

In 2001, the USPTO began publishing pending patent applications at approximately 18-months after the application's priority date. Over the past eight years, this publication rule has slowly become more integrated with the examination system. As the first chart shows below, most issued patents now cite to at least one US publication. (Patents issued January 1, 2009 - June 23, 2009 cite 4.2 US published applications, on average).

Moving toward Transparency in Prior Art: Patent applicants have historically been frustrated by prior art defined under Section 102(e) of the Patent Act. That section defines a class of "secret prior art" that was not publicly available at the time of an applicant's filing, but that was already on-file with the patent office. By opening-up the application files at an earlier date, the potential unfairness of secret 102(e) prior art is beginning to be reduced because the early publication makes the prior art searchable by the public. Although not directly proving this point, the second chart categorizes the cited US published applications according to their prior art classification. As time moves forward, more applications have become 102(b) prior art (published for more than one year before the applicant's filing) and the percentage of cited applications categorized as 102(e) prior art continues to drop.

Notes:

• This study is based on an analysis of all US patents issued between January 1, 2000 and June 23, 2009.
• A cited published application was counted as 102(e) prior art if the publication date of the cited application was later than the filing date of the issued patent that cited the application.
• A cited published application was counted as 102(b) prior art if the publication date of the cited application was more than one-year prior to the filing date of the issued patent that cited the application.  The graph shown limits the analysis to only issued patents that do not claim a priority date based on a prior patent filing.  Patents that claim an earlier priority date tend to eliminate a portion of 102(b) prior art.
• See also Dennis Crouch, Published Applications as Prior Art, Patently-O, http://www.patentlyo.com/patent/2009/07/published-applications-as-prior-art.html (July 28, 2009).

   

   

   

   

  

Comments

[curious]

The early publication of patent applications is another advantage of the US. patent system. It quickly adds to the library and knowledge of prior art. While inventions in some fields (such as biotech) become publicly available through published technical articles, inventions in other fields (primarily mechanical) never become publicly available unless they are patented or their applications are published.

Competitors and others having access to the published applications can then build upon the technologies disclosed therein.

[Alan McDonald]

How about this?

Require all applications to be filed electronically and open up the electronic file so applications would become prior art on the date they are filed.

[Jules]

"Require all applications to be filed electronically and open up the electronic file so applications would become prior art on the date they are filed."

Instant publication. I would really like to hear well thought-out objections to this.

There is a benefit to 18-month publication. When the inventor wants to keep their invention as secret as possible, they can stretch out their timelines as long as possible.

For example, a technical paper publishes but is not widely-read (although the authors are credited), one year later they file for patent application, 18 months after that the application publishes (in most cases again it is not widely-read), then the patent publishes (it finally gets read). In that case the inventor has kept their invention as secret as possible, where the benefit may be that the true inventors are the only ones able to work out all the variations instead of having other people design around them.

Complicated yes... but maybe a system worth fighting for.

On the other hand, instant publication seems more in line with current techonogies. Things publish instantly on the internet every day, so why not instant publication for patents? It seems like it would promote the progress more too, if you can get around the case for 18-month publication I provided above...

[Malcolm Mooney]

"inventions in other fields (primarily mechanical) never become publicly available unless they are patented or their applications are published."

That's a great argument for going the trade secret route.

[EvilDave]

Good, I much prefer having a published application cited against me than an issued patent. In fact, if you are citing a patent, please feel free to cite the published application of that patent.

The reason is paragraph numbering as opposed to column and line numbering. It is far far easier to cite to a paragraph and search the PTO's HTML version of the publication than it is to use a PDF. The PDF of the publication/patent is great for the drawings, but when finding out what those drawings mean, the raw text (in the HTML version of the file) is so much easier to use.
When you switch to pure text you lose the column information. This means I have to find the text at the column cite, search for it in the HTML and then reserve the process when I want to quote something back to the PTO. With paragraph numbering I can skip that unpleasant step.

I wish they would start paragraph numbering issued patents.

[A plurality of thresholding units]

I know our captain's captain wants 10-month pendency, but this calls attention to one problem with that: applications abandoned at 16 months wouldn't get published.

[No One in Particular]

" Require all applications to be filed electronically and open up the electronic file so applications would become prior art on the date they are filed."

Is that before or after the Security Review?

(A Security Review can take six months or more.)

[LeMieux]

"That's a great argument for going the trade secret route."

Trying to think of a great argument for your opinions to go the trade secret route Mooney.

[LeMieux]

Article by ME (See also, ME citing ME...)

[LeMieux]

Platitudes of "transparency" notwithstanding, the "secrecy" of 102(e) art, is a small price to pay for confidentiality of the initial filing. I personally don't want my competitors knowing what I am filing on until it is absolutely necessary - even if it means I don't know what they are filing on until down the road.

Provisional applications on the other hand, "secretly" cast the date farther back by as much as one year, so even matter contained in applications that are within 18 months from an applicant's filing, may enjoy provisional priority that defeats the applicant's date by as much as 30 months.

[breadcrumbs]

In addition to No One in Particular's note about the BIS-EAR protocol issue, there is the complication with the Do Not Publish availability.

And aside from both of these, isn't there an equity issue? When an applicant provides his work to the Office, the Quid Pro Quo is the divulging of information for a patent. With forced publication (if the applicant wants more than US rights), the Quid Pro Quo is not met, as pendency far outweighs the 18 month publication point in most circumstances. I recognize that if you want more than US rights, the Office asks you to make a sacrifice and one does not have to go for right outside the US, so the Non-publicaiton request "theoretically" preserves the Quid Pro Quo.

But if you go down the path of instant publication, even if the export control issues could be allieviated, what equity is provided applicants for the publication of their work?

btw, Love the ME.

[Fixed Your Claim]

NOIP wrote: "Is that before or after the Security Review? (A Security Review can take six months or more.)"

My thoughts as well. But how about publication immediately after the security review is completed?

[Bernadette Marshall]

great post and comments

[Fixed Your Claim]

curious wrote: "early publication of patent applications is another advantage of the US. patent system"

I agree that it is (now) a good feature, but don't forget that the U.S. had to be dragged practically kicking and screaming to adopt the practice of "laying open" applications that patent authorities in other industrialized nations had been using for years.

How soon we forget the sordid history of submarine patents...

[don't bother]

"Provisional applications on the other hand, 'secretly' cast the date farther back by as much as one year, so even matter contained in applications that are within 18 months from an applicant's filing, may enjoy provisional priority that defeats the applicant's date by as much as 30 months."

Huh?

[Jules]

"Provisional applications on the other hand, 'secretly' cast the date farther back by as much as one year, so even matter contained in applications that are within 18 months from an applicant's filing, may enjoy provisional priority that defeats the applicant's date by as much as 30 months."

The statement is hard to understand, but I get the point... yes, a provisional application can prolong non-publication (secrecy) by up to one year. That's given in 35 USC 122(b)(2) as an exception to 122(b)(1). Some companies do this masterfully, perfectly timing each filing to prolong secrecy to the maximum possible.

[Jules]

"Provisional applications on the other hand, 'secretly' cast the date farther back by as much as one year, so even matter contained in applications that are within 18 months from an applicant's filing, may enjoy provisional priority that defeats the applicant's date by as much as 30 months."

The statement is hard to understand, but I get the point... yes, a provisional application can prolong non-publication (secrecy) by up to one year. That's given in 35 USC 122(b)(2) as an exception to 122(b)(1). Some companies do this masterfully, perfectly timing each filing to prolong secrecy to the maximum possible.

[breadcrumbs]

"Provisional applications on the other hand, 'secretly' cast the date farther back by as much as one year, so even matter contained in applications that are within 18 months from an applicant's filing, may enjoy provisional priority that defeats the applicant's date by as much as 30 months."

I'm not sure this is correct. Isn't the 18 month to publish calculation made fromteh earliest priority date, rather than the filing date? I don't think there is a 30 month availability. However, with a Do Not Publish request, the filing can stay secret until the patent process is complete (upwards to several years).

[fisher ames]

"the U.S. had to be dragged practically kicking and screaming to adopt the practice of "laying open" applications that patent authorities in other industrialized nations had been using for years."

yes, that's accurate, but there were legitimate concerns at the time. Let's hope that "flooding" tactics don't make a come back in early publication countries.

[don't bother]

"The statement is hard to understand, but I get the point... yes, a provisional application can prolong non-publication (secrecy) by up to one year. That's given in 35 USC 122(b)(2) as an exception to 122(b)(1). Some companies do this masterfully, perfectly timing each filing to prolong secrecy to the maximum possible."

Huh?

I don't think you understand 35 USC 122(b)(1 and 2).

[Jules]

"I don't think you understand 35 USC 122(b)(1 and 2)."

Oops, you're correct. I got suckered in. That, and I was getting confused with something else. My bad.

[HierarchyOfPontificationBuckets]

Prosecutors need to know 102(e) inside and out, and 103(c). Seen a lot of cases where the attorney wasted client money and created needless prosecution history to amend/argue against an ineligible reference. Also if the 102(e) ref requires a provisional date, make sure the provisional discloses what the examiner is relying on in the publication. The list goes on.

[don't bother]

"Also if the 102(e) ref requires a provisional date, make sure the provisional discloses what the examiner is relying on in the publication."

Correct. Because you can bet that the examiner was too lazy to check the provisional. And the BPAI has endorsed such laziness (in whatever case that was).

[Malcolm Mooney]

"I personally don't want my competitors knowing what I am filing on until it is absolutely necessary"

It certainly is convenient to keep competitors in the dark but other than the "security check" (LOL) there is no reason that applications shouldn't be publically available on their filing date.

[Dale B. Halling]

Publication broke the basic social contract between society and the inventor. Society gets the advantage of the disclosure, even if the applicant never receives a patent. We should adequately fund the PTO, so 102(e) issues are rare and go back to not publishing patent applications.

[Steve M]

"Provisional applications on the other hand, 'secretly' cast the date farther back by as much as one year, so even matter contained in applications that are within 18 months from an applicant's filing, may enjoy provisional priority that defeats the applicant's date by as much as 30 months."

"I'm not sure this is correct. Isn't the 18 month to publish calculation made from the earliest priority date, rather than the filing date? I don't think there is a 30 month availability. However, with a Do Not Publish request, the filing can stay secret until the patent process is complete (upwards to several years)."

Yes; the 18 month pub is from the earliest priority date; in this case the provisional filing date.

"(Also) if the 102(e) ref requires a provisional date, make sure the provisional discloses what the examiner is relying on in the publication."

Though rare in my (admittedly limited) research, it does surprise to see the occasional non-provisonal relying on a provisional where the non differs sufficiently from the pro to warrant more accurately calling the non a CIP.

Would be interesting to see a patent issued on such a foundation in an infringement action involving its priority date...

[curious]

I have seen so many provisionals cobbled together at the last moment with minimal disclosure that I expect to see priority to that provisional being denied in the later-filed non-provisional because of enablement and best mode problems in the provisional.

[LeMieux]

...my bad

18 mo from earliest priority...

"It certainly is convenient to keep competitors in the dark but other than the "security check" (LOL) there is no reason that applications shouldn't be publically available on their filing date."

This is pure hogwash...

[Ned Heller]

I agree with this:

Publication broke the basic social contract between society and the inventor. Society gets the advantage of the disclosure, even if the applicant never receives a patent.

Posted by: Dale B. Halling | Oct 14, 2009 at 06:10 PM

[Ned Heller]

The default rule should be non publication. If a patent application is filed abroad or PCT, it will be published there. That is enough.

[Wildebeast]

Publication could more usefully be brought forward to 13 months - thus allowing time for the security review and to make any priroty applications under the PCT.

And by the way if early publication is such an advantage of the US system why did it take until 2001 to do it - Europe has been doing it for at least two decades before

[hindsight from the future]

another loss for the US (and its inventors) by trying too hard to be like the rest of the world without a decent rationale. What does the inventor get out of his work being published? In fact the Office loses its impetus to get the examination done - they already got the quid.

[MaxDrei]

Another great thread for a European reader. As the Wildebeast observes, for those still practising in ROW, first publication only after issue of the patent is nothing more than a historical curiosity (apart from in the USA). We know no system other than the A publication as the medium of publication for prior art purposes and the B publication useful only as the definition of the scope of the patent monopoly granted.

Welcome to the world.

Somebody above raises the canard (again) that pre-issue publication breaks the social contract between Government and inventor (monopoly in return for disclosure of an invention). Does s/he not realise that emergence of the A publication sets up a right for monetary compensation in respect of acts committed before issue that would constitute infringement if committed after issue? Does s/he not appreciate what a chilling effect on copying is achieved by the emergence of the fearsome A publication of an app marching towards issue, and under the control of an Applicant who can, at will, delay prosecution indefinitely to see what the competing products turn out to be, or pushes on through to issue, in double quick time, to enjoin the infringing blighters?

[sarah mcpherson]

Why not after security review, you record it in a different area. perhaps another building. then the examiner does his work sends it back to the recording area. and another set of examiners flag what is in process with claims that compete or outrule the claims that the examiner believes after his work are patentable. Then the secret remains secret. Then you go from there. That would cut through all the crap. And as far as how prior art is reviewed? Ebay does it every day with layers of new things every single day. Why can't the PTO follow the same category and then sub category and so on the same way ebay does it? that is a spread sheet. and everyone uses spread sheets.

[hindsight from the future]

MaxDrei - it is not a canard for US law. You are messed up and will likely confuse idiots in the states that think you know what you are talking about. there is no delay indefinitely at will. there is no chilling effect in the reject-reject-reject culture. Dont you get that the chilling effect would only come from an actually issued patent? Dont you get that this is exactly why your use of canard is just so wrong?

No patent and published equals quid and no pro (actually, no quid for the inventor and all pro for the rest of the world who now has access to the unpatented, yet published work).

it is standard advice to my clients to think long and hard about what they are giving up by not going for the no publish option. Will they really use any rights gained outside the US? if not, or even if the gain is small, the tradeoff to forego foreign filing can often be worth the preservation of knowledge. mooney is comitting malpractice by advising publication on filing date and is clearly not an attorney anyone should be listening to.

[Alan McDonald]

I love it.

NPEs for returning to submarine patents.

And there are no Patent Trolls.

[MaxDrei]

Well you see Hindsight, I'm writing on the basis of my experience, which is different from your experience. My clients operate world-wide so it's not enough for me to know about patent law in the world east of, and west of, the USA. I need also to know about patent law in the country in between. I admit, I find it hard to understand why the fundamentals of patent law in the USA are different from everywhere else. One would think that society ought to reward, with a temporary monopoly, the inventor who is the first to bring to the public contributions (progress) to the technological arts. But, alone in all the world, the USA rejects that scheme for its patent law. I'm sure Mr Jefferson has long been turning in his grave on that point.

So, Hind, that's why I'm active here. And you're helping me to get inside the head of a typical US patent attorney, for which I must thank you. Thank you.

[hindsight from the future]

the reason for the decline in 102(e) art given by crouch does not wash. with the explosion in filings there is more not less available 102(e) art even with 18 month publication. a more likely reason is examiner laziness as a 102(b) takes less effort than a 102(e) and is less likely to be contested as Hierarchy above points out.

sarah asking why the office does not do something logical will cause you endless frustration. the office is supposed to be the experts of what is out there including applications not published. only the office has eyes on and only the office can apply this art. yet as crouch shows, the use of this is dwindling. is there less art in this unpublished world? - likely not, and not even with the 18 month publish rule - just look at the pure numbers of aps will tell you this.

[Ronald J. Riley]

Early publication has been a disaster for small entities.

1) It allows large entities to look at and start working on circumventing the invention long before the inventor has rights granted.
2) This frequently costs the inventor the highest margin initial sales of product. Patent Pirating companies can rush the invention to market and use a small percentage of their ill gained profits to litigate the real inventor into bankruptcy.
3) Publication is being used by some large companies to dump tons of alleged prior art on the inventor’s attorney which forces the attorney to formally address each even when they are not especially relevant. The cost of this is born by the patent applicant and it often dwarfs the normal cost of filing a patent.
4) Publication greatly aids those companies who create false prior art. Two examples being Microsoft with Eolas and RIM with NPT.
5) Published applications which do not result in issued patents become pseudo prior art. They often are not actually prior art but do become a weapon in the hands of patent pirating companies trying rationalize their theft of others inventions.

Long pendency is another disaster for small entities. A better approach than early publication would be for the patent office to actually prosecute patents within eighteen months. No patent application should be published prior to rights being granted; thereby preserving the applicant’s right to choose trade secret protection as opposed to patenting the invention.

There is no reason that the USPTO cannot manage pending patent applications to ensure that they are prosecuted within eighteen months.

There is concern in the inventor community that Kappos has no entrepreneurial experience and that his long tenure with IBM has not equipped him to understand independent inventors or small company’s unique problems. His testimony about the nature of inventing demonstrated a profound ignorance and typical corporate arrogance.

Corporate politics dictates spreading credit for inventions around. But reality is that most inventions start in one mind. They may be fleshed out by more than one person but that is not really the same thing as the original conception.

There is no question that Kappos is making improvements in the functioning of the USPTO. It would be difficult for anyone to do worse than the previous two and the forth predecessors.

It seems equally clear that IBM, Microsoft and other large companies have either bought and or duped the Obama Administration and that no consideration is being given to the adverse impact Patent Deform will have on small entities. Patent Deform is a bald faced attempt to turn the patent system into a king’s sport by increasing the cost of getting and holding onto patents by a hundred fold or more and at the same time decreasing recovery for infringement by ten to a hundred fold.

America’s patent system has long been a significant part of making America the land of opportunity. The patent system has been a vehicle where an upstart startup could challenge vested interests. IBM personifies how as large companies age they compensate by filing hordes of minor incremental patents. They substitute quantity for quality, arrogantly misappropriate others inventions and then whine when they are held accountable.

Over thirty percent of patents filed by domestic interests are small entities. Kappos has made it very clear that his agenda is to disadvantage inventors and small companies with patent Deform. The problem with doing this is that in the end large companies will stagnate even more than they have with having use nipping at their heals.

Ronald J. Riley,


I am speaking only on my own behalf.
Affiliations:
President - www.PIAUSA.org - RJR at PIAUSA.org
Executive Director - www.InventorEd.org - RJR at InvEd.org
Senior Fellow - www.PatentPolicy.org
President - Alliance for American Innovation
Caretaker of Intellectual Property Creators on behalf of deceased founder Paul Heckel
Washington, DC
Direct (810) 597-0194 / (202) 318-1595 - 9 am to 8 pm EST.

[MaxDrei]

Ah, I see now, Mr Riley. The same old story. All the world's ills will be solved, as soon as there's one rule for me and a different one for everybody else.

Because: I invent, he copies, they stifle.

Therefore, simple justice demands:

Give me (David) a patent, any time I ask for one.

Categorize any patent application from the other fellow (Goliath) as a brake on the only sort of innovation that counts, and reject it.

[Jules]

To account for my gross error in briefly misunderstanding 35 USC 122(b)(1 and 2) above, here is what I was getting consfused with:

For the little guy, here's an idea...

Discretely publish your invention so that it is "public" for the purpose of art under 102(a), then file your patent application one year later to avoid your publication being 102(b) art against your application.

By discretely, I mean something like put it on the internet but prevent it from being crawled by Google. Limit its searchability drastically, but not too much that it isn't public.

By doing so, you basically kept your invention secret for 30 months instead of 18. But was it worth all that effort?

[don't bother]

"For the little guy, here's an idea..."

This is why you're an examiner, and not a practitioner.

[MaxDrei]

Depends who you ask Jules. Most writers here say that filing anywhere in the world is a complete waste of money. The only jurisdiction worth bothering about, they say, is the USA. What is it that those investor advertisements always caution? Oh, I know: "Past performance is no guide to the future". Those filing patent applications ought to be thinking about the future, not the past. Medical device manufacturers, for example, used to file only in the USA. Not any more These days, they can make good profits from innovative medical devices, even outside the USA. In fact, it is American manufacturers who make most of the money out of medical devices, in Europe. That's because 1) American medical manufacturers are more entrepreneurial than Europeans and 2) they at least know they have to file before they publish.

[kd]

Here Here Mr. Riley!

One other comment for small inventors.

If an inventor comes up with an idea and files a patent application on it, it is NOT protected. If he takes his invention to market (e.g. starts to sell it) and a competitor starts copying it, if the competitor stops the “infringement” the day before the patent issues THERE ARE NO DAMAGES TO COLLECT, yet the inventor may have lost out on the most valuable initial market. This is a huge problem with small inventors that take their ideas to large companies.

If you add publication to the mix, even companies who have never been approached by the inventor will know about the invention. "Provisional rights" (why not call them publication rights since they stem from a published application, not a provisional application?) are almost meaningless because if the claims are amended they are no longer available unless the application is published again and then the clock starts over.

If there is instant publication, this is the worst case scenario for small inventors who may never get a patent often because they simply can't afford the process. Instant publication would mean that they dedicate their idea to the public and never get a dime.

On the other hand, under the present system if an inventor keeps his idea secret (uses confidentiality agreements and non-compete agreements) and approaches a big company, the inventor at least has an ace in his hand. The company may be willing to sign an agreement in order to learn about the idea and the inventor may have contractual rights to punish bad behavior. What incentive would a company have to sign such a contract if they could just put a watch on the patent office publications? Further, if under the current system the patent never issues, the inventor does not have the added insult of having disclosed it to his competitors!

[Jules]

"This is why you're an examiner, and not a practitioner."

It's not like I'm giving legal advice here. Good lord ... where's your creativity? I was just throwing a situation out there. You don't have to insult me like that ;)

[kd]

For an admittedly oversimplified (1 minute) look at the proposed patent reform (I know it is dead for now), take a look at http://www.youtube.com/watch?v=-lewaN3t29U
(if that doesn't work, go to www.youtube.com and search patent reform - look for four guys in the picture).

Funny but true.

[Noise above Law]

Alun,

I must take issue with your ignorance and anti-patent bias. Preserving a client’s best interests in advancing a non-publication request where appropriate has absolutely nothing to do with submarine patents. Nothing.

Your value-laden post falsely indicates otherwise. Preservation can be proper for both NPE and PE, for both trolls and for non-trolls, as the sets of terms are not synonymous – Practicing entities clearly can behave both like trolls and non-trolls. Your attempt at using language to color the debate simply rings false when one understand what a submarine patent is, or rather, was. The change in patent term tied to issue versus file date effectively ended the practice of submarine patents.

Try to post when you know something about the topic, instead of being misleading and simply wrong.

Hindsight,

I am surprised that you cannot see that Malcolm isn’t an actual lawyer, although he does like to pretend that he is one.

MaxDrei,

You need to keep your history (of the US) in line – Jefferson came around to the notions of patents as promoted by most of the patent bar late in his life and would not be turning in his grave at the pro-US bent of comments here – quite the contrary, he would be turning in his grave at the thought of the US sacrificing its advantages just to be like the rest of the world. Yes, you do need to understand the fundamental differences in US patent mindset – it is probably your biggest weakness, but one I see you willing to acknowledge and that is why I place you in a different class than the usual crap posting crowd. My assailing you is indeed meant to make you better.

Jules,

You are being too complicated. If secrecy is that important to you, request non-publication. Generally, you then either keep the application sealed until it is a patent, or it stays sealed forever.

[don't bother]

"You don't have to insult me like that"

So you consider being called an examiner an insult?

"It's not like I'm giving legal advice here."

Thank heavens for small favors.

[Night Writer Patent Attorney]

>>Hindsight,

>>I am surprised that you cannot see that >>Malcolm isn’t an actual lawyer, although he >>does like to pretend that he is one.

I'd bet that he is an examiner.

[Jules]

"So you consider being called an examiner an insult?"

Did you put 2 and 2 together to come up with that? Notice the winking face ";)" after my statement? There's this thing, you might have heard of it, it's called a "joke".

Noise, I suppose you're right. I'll try to keep it simple.

[don't bother]

"There's this thing, you might have heard of it, it's called a 'joke'."

Oh! Jokes. I've heard of jokes. Usually they're funny though. :-)

[appealho]

NWPA, he's either an examiner or some other anti-patent dude. But, I do agree with NAL that MM most definitely is not a patent lawyer.

[Patent Attorney]

It's hard to believe that before 2003, 102(e) rejections were almost unheard of.

[MaxDrei]

35 USC 102(e). It is becoming more important is it, patent attorney? That's the Henry Ford novelty provision, right. Any colour you like, as long as it's black. Any language you like, as long as it's English. Any Paris Convention country Patent Office you like, as long as it's the USPTO.

Or do I see it wrong?

Who knows about that guy Hilmer? Who was he then?

[Ned Heller]

MaxDrei, you suggested one could get RR from published applications upon issuance of the patent. This is true, but only under extreme circumstances.
- The published claims have to issue; and
- The infringer has to be given actual notice.

As we all know, claims typically never issue as filed. Secondly, the requirement of actual notice is onerous, as with an issued patent all one has to do is mark his or her product if the claims are not directed to a process. If one does not have a product or the claims are to a process, marking is not required.

Now if the law were the same with respect to damages and notice as they are with respect to issued patents, that would go a long way to leveling the playing field. But the problem of claims issuing unamended remains.

Now the better proposal here would be like the default law in Europe: if a claim is narrowed, past damages are not lost. Think about that for a few moments. The default US law is the opposite. If the claims are narrowed, one loses past damages -- which is a major reason for infringers to use reexaminations after being accused of infringement.

Now if the law regarding published applications were that at least a RR would be allowed if the infringer infringed allowed claims from the date of an amendment, provided they also infringed a claim as filed, things would be a lot more fair to the inventor and not unfair to the infringer.

[Tazistanjen@gmail.com]

Evil Dave: have your PDF program do OCR text recognition on the PDF patent. Then you can word search and still have the column and line numbers. I know Adobe Acrobat Pro does a good job with this.

[MaxDrei]

I'm not arguing with you Ned. Readers should factor into my comments that I know the patent law of Europe much better than the patent law of the USA and that I'm using this blog to improve my knowledge of US patent law. Also, I assume that US patent law can sometimes change. So, I argue what the law might be, after such amendment, rather than what it is today.

Still a worthwhile exercise, I like to think.

[broje]

"If an inventor comes up with an idea and files a patent application on it, it is NOT protected. If he takes his invention to market (e.g. starts to sell it) and a competitor starts copying it, if the competitor stops the “infringement” the day before the patent issues THERE ARE NO DAMAGES TO COLLECT, yet the inventor may have lost out on the most valuable initial market. This is a huge problem with small inventors that take their ideas to large companies."

KD, there's something called "provisional rights" that was added when the publication rules went into effect. Basically, if your claims issue as published, then you can start calculating damages from the date of publication forward. You just can't enforce them until the patent issues. However, I don't know of a single case in which provisional rights have been enforced at trial. Maybe they have played a role in amounts of settlements. Does anyone know of a case in which provisional rights were successfully enforced?

IANYL. TINLA. SPORK.

[Michael Valentine Smith]

If you are having trouble word searching the PDF just call up the patent in Google & do the word search. It highlights the search terms within the PDF of the patent so it is clear where it can be found. Amazing how behind some people are ;)

MVS

[fisher ames]

"Who knows about that guy Hilmer?"

Max, a little context may shed some light on the CCPA's Hilmer decision. Section 102(e) is a codification of Milburn v. Davis-Bournonville; a SCOTUS decision written by Justice Holmes way back in 1926. Among other things, this case says that the earlier filing date of the reference US patent is prima facie evidence that the current applicant is not the "first inventor" in the United States as required by US statute. Thus, an earlier priority filing date under Section 119 based on your filing date at the Vatican patent office would not constitute prima facie evidence of a different first inventor in the US than the current applicant (under the "Milburn Rule" or 102(e)).

[Ned Heller]

MaxDrei, I was just offering you some insight into US law. I also appreciate your kind explanation of European law from time to time. All of us should view this forum as a learning tool.

[Ned Heller]

broje, check out my post just above yours on "provisional rights."

[Ned Heller]

fisher ames, speaking of "invention in the United States," the last time I checked, the pending patent bill will make "known or used," which is now limited to the United States, universal. Imagine that!

Now couple this proposal with a reduction in the "clear and convincing evidence" standard being advocated by the big infringers and their fellow travelers in academia, and we have a vision of the future: the big company can afford to scour the world for unpublished prior art and present it in court. The little guy may not have the resources to investigate the credibility the unpublished foreign art and will no long have the benefit of the "clear and convincing" evidence standard.

Now we see one more page in the plan being promoted by the various anti-patent coalitions -- a plan to severely undermine US patents.

[MaxDrei]

Thanks Fisher. I still don't understand how the USA seriously comes to the idea that its 102(e) domestic patent law is compatible with the Paris Convention. Tell me, does the USA advocate that all the other members are free to copy 102(e) into their patent law, so that, if valuable rights are not to be misappropriated, priority filings will need to be made simultaneously in CN, JP, KR, EPO and any other market of importance?

Much shrugging of shoulders, no doubt, and "Please yourself" mutterings, as people read this.

Heller, thanks for the gracious note. I hope I don't spoil the mood, with my latest rant.

[Malcolm Mooney]

"It's hard to believe that before 2003, 102(e) rejections were almost unheard of."

Why? Prior to 2003, we were in Magical Bubble Land when patents were barely examined at all.

appealho: "NWPA, he's either an examiner or some other anti-patent dude. But, I do agree with NAL that MM most definitely is not a patent lawyer."

Here we go again. Get your tinfoil hats ready.

Troll: "it is probably your biggest weakness, but one I see you willing to acknowledge and that is why I place you in a different class than the usual crap posting crowd. My assailing you is indeed meant to make you better."

Ewww, MD, I'm sorry you had to read that. P.U.

[sprays thread with air freshener]

[Ned Heller]

MaxDrei, how is Section 102(e) incompatible with the Paris Convention. One still has priority to one's foreign filing date, provided, of course, the foreign document fully supports the claimed invention. (I know that this latter aspect of US and now European law (fully support) is highly controversial.)

[Ned Heller]

MM: Regarding the "Bubble," and its end in 2003, please explain.

[MaxDrei]

Ned tell us about your experience of 30 years of absolute novelty in Europe, throughout the tens of thousands of corp-on-corp mega-oppositions at the EPO, over blockbuster patents with no expense spared fighting. Tell us if you will how often it happens that this "unpublished" art of yours plays a role, and what evidential weight it pulls. Then tell us about how searching is done these days. It's by a little man, all on his own, looking at a PC and searching the net, isn't it?

Back in the 19th Century, the UK gave out patents for "communication inventions" brought back to the UK from the deep dark world outside. In Europe, that sort of thing went out with the Ark.

[Night Writer Patent Attorney]

>>appealho: "NWPA, he's either an examiner or >>some other anti-patent dude. But, I do agree >>with NAL that MM most definitely is not a >>patent lawyer."
>>Here we go again. Get your tinfoil hats ready.

Well, you never affirmatively assert that you are a patent lawyer. Do you? I think you are trying to hide behind a bit of tinfoil, but we can see you MM.

Don't be ashamed. I have very good friends that are examiners and enjoy thier company and think they are smart people. It's ok to come out of the closet MM.

[Malcolm Mooney]

broje: "However, I don't know of a single case in which provisional rights have been enforced at trial. Maybe they have played a role in amounts of settlements. Does anyone know of a case in which provisional rights were successfully enforced?"

What about this one?

http://www.patentlyo.com/patent/2008/09/provisional-rig.html

And I expect there have been others. As you noted, they also surely play a role in settelements. No litigator worth his/her salt is going to omit provisional rights from the calculation of damages if there is a remote damage of collecting them.

[Malcolm Mooney]

"damage" = "chance" in previous comment

[Malcolm Mooney]

NWPA: "Well, you never affirmatively assert that you are a patent lawyer. Do you?"

You either have early-stage Alzheimers or reading comprehension problems.

[Malcolm Mooney]

Ned: "Regarding the "Bubble," and its end in 2003, please explain."

http://www.google.com/search?q=%22patent+bubble%22&sitesearch=patentlyo.com%2F

Enjoy

[Ned Heller]

MaxDrei, please educate us about the evidence problems of unpublished prior art in Europe. I would be very interested. For example, what corroboration is needed?

[MaxDrei]

Ned, I am thinking of swords and shields. You can rely on your non-US prio to defend the validity of your own claim , but not to assail any claims of your US competitor. So, even if you get your own claim through to issue, you can't use your earlier prio to stop your later-filing US competitor getting his own US patent as well. It ain't like that, anywhere else on Earth.

[Ned Heller]

MaxDrei -- in a way you are right and in a way you are wrong. The late comer claiming the essentially the same thing will be thrown into or can be thrown into an interference where he will lose due to being the junior party.

[fisher ames]

"I am thinking of swords and shields"

That's true with respect to the foreign filing standing alone, but there is nothing stopping a foreign applicant from posting his/her application on the internet the same day that the foreign app is filed or otherwise publishing the app information to create 102(a)/(b) publication art that IS available for sword fighting in the US. Early publication enthusiasts should have no problem with this suggestion.

[Ned Heller]

As I said earlier, I think the larger problem is the lack of priority if any element is not fully supported.

Example: priority document discloses A, B and genus of A and B.

PCT, US, or EPO case further discloses C and claims genus of A, B and C.

Intervening art discloses A, B and A + B.

The Paris Convention suggests that the intervening art disclosing the same subject matter should not be effective prior art against a later application claiming priority to that application. However, case interpretation will deny priority to a claim to C and a claim to the genus A, B and C, essentially rendering those claims unpatentable.

This does not affect US applicants now as one can distinguish an intervening reference not a statutory bar by showing prior invention of the subject matter of the disclosure. In re Stempel. But in first-to-file countries, as the US soon will be, the intervening art is good and effective, contrary to the plain language of the Paris Convention.

[Night Writer Patent Attorney]

MM: >>You either have early-stage Alzheimers or >>reading comprehension problems.

Please direct me to a post where you unequivocally state that you are a patent attorney.

[Alan McDonald]

Noise above Law:

Before you call me ignorant about patent law, you may want to look up my registration number and realize that I've been in this business for over 35 years. I am not anti-patent. I am anti-what the US patent system has become. And as long as there is an ED Texas, I have to do everything possible to avoid it.

Just because I seek to protect corporate clients from trolls and their overbroad claims does not mean I don't know what my proposals would do. Level the playing field between trolls and their "infringers".

If you're an individual inventor or NPE coming with a non-disclosure agreement you won't make it past the receptionist's desk if I have anything to do with it.

[appealho]

I have always gotten the impression you were anti-patent Alan McDonald. For years, and especially after reading your latest post.

[Malcolm Mooney]

"Please direct me to a post where you unequivocally state that you are a patent attorney."

LOL. Are you sure don't want me to bake you a cake first?

[Night Writer Patent Attorney]

"Please direct me to a post where you unequivocally state that you are a patent attorney."

MM: >>LOL. Are you sure don't want me to bake you a >>cake first?

Okay, Malcolm. It is pretty clear that you are not a patent attorney otherwise why not just say yes I am a patent attorney. Let me show you how easy it is. I am a patent attorney.

It sure is fun chasing you.

[Malcolm Mooney]

Alan: " I am not anti-patent. I am anti-what the US patent system has become."

And here's to you, Alan! The "anti-patent" epithet is quickly hurled at any attorney or agent who dares to question the vapid "more patents = more better!" position of the patent bulls who lurk here.

For those keeping track, you are "anti-patent" if you:

*believe that some attorneys engage in inequitable conduct before the PTO

*believe that some applications are filed that lack non-obvious subject matter

*believe that 35 U.S.C. 101 has teeth capable of shredding some things "under the sun made by man"

*believe that Beauregard claims are invalid per se

*believe that the presumption of validity should be easily rebutted if a substantial Examiner error can be demonstrated

*believe that applicants routinely file claims under oath that they know are invalid

*don't have a framed picture of Judge Newman on your wall

[6]

Dam I was looking pretty good till that last one, if I have a framed picture of Newman, but I also believe all of the above, can I still be in with the cool anti-patenters?

[broje]

Only if you throw darts at it. Or perhaps "darts."

[Noise above Law]

Alan,

Respectfully, then, show your acuumulated 35 years of wisdom and refrain from wanton and clearly incorrect attacks, then I won't have to call you out on legitimate actions that attorneys can (and should) do for their clients including protecting their work before a patent issues. Leave your scares from troll battles on the sidelines where they belong.

Besides, you know your in trouble if you have Malcolm and 6 taking your side.

[curious]

"The U.S. Patent & Trade Office just showed me preliminary data for fiscal 2009, and it shows that 93,725 patents were issued to U.S. residents. While that’s 49% of the total 190,121, it’s up from 91,843 a year earlier. The rise might continue next year. Americans filed 264,197 patent applications in the fiscal year that ended Sept. 30, according to the office’s preliminary data. That’s 55% of the total, and up from 256,887 in fiscal 2008."

http://www.businessweek.com/innovate/next/archives/2009/10/feeling_blue_ab.html

[curious]

"Guess which government agency received the most U.S. patents through the year’s midpoint. If you had answered the U.S. Navy, you would have been right in 2008. But in the fiscal year that ended on June 30, the winner in terms of both the value of its patents and sheer volume wasn’t even an American entity. It was South Korea’s Electronics & Telecommunications Research Institute."

1. South Korea Electronics & Telecommunications Research Institute
2. U.S. Navy
3. U.S. Energy Dept.
4. U.S. Army
5. U.S. National Aeronautic & Space Administration
6. Japan Ministry of Education, Culture, Sports, Science & Technology
7. U.S. Health & Human Services Dept.
8. Singapore Agency for Science Technology & Research
9. Japan Ministry of Economic Trade & Industry
10. France National Center of Scientific Research

http://www.businessweek.com/innovate/next/archives/2009/10/us_slips_to_sec.html

[sucemabite]

"*don't have a framed picture of Judge Newman on your wall"

LMFAO

[Ned Heller]

MM, re: Bubble.

I saw your quotes that it ended in 2003 with a "directive."

1) Who issued the "directive."
2) What or who caused the bubble in the first place?

Ned

[Purple People Eater]

I have a framed picture of Jon Dudas on my wall. I feel that it nicely accentuates my John Doll chia pet.

[MaxDrei]

Fisher Ames I take it you are American? Above, I said I was expecting shoulder shrugs to my 102(e) discrimination point. You just gave me one, when you wrote:

"That's true with respect to the foreign filing standing alone, but there is nothing stopping a foreign applicant from posting his/her application on the internet the same day that the foreign app is filed or otherwise publishing the app information to create 102(a)/(b) publication art that IS available for sword fighting in the US. Early publication enthusiasts should have no problem with this suggestion."

As your "That's true"..thanks.

As for your "but" am I to take it that foreigners have to publish the day after they file but Americans..not. I think you just made my point.

As for you, Mr Ned Heller, you say the foreigners should be grateful that they have an opportunity under US law to initiate an interference, in order to get justice done. Another sort of shoulder shrug, I think.

And what's all this about the Rest of the World operating: "..contrary to the plain language of the Paris Convention.". Really. If so, you remind me of the old man driving the German Autobahn, phoning his wife and declaring "On the news they said to watch out for somebody driving the wrong way up the autobahn.Well, there isn't just one, there's hundreds of them". Will you tell me a bit more of this theory of yours?

On second thoughts, don't bother. We have the week-end ahead of us, and I'm at least 6 hours ahead of you.

[MaxDrei]

Mr Heller, one more thing, if I may. In an interference, it's not good to be junior party, right. Presumptions, prima facie, that sort of thing. Suppose that, over a 14 month period, the following sequence of apps is filed. A files pro in UK. B files pro in the USPTO. A files non-pro at the USPTO, declaring Paris priority. B files US non-pro, declaring his US pro priority. Who is senior party, and why?

[fisher ames]

max3: "As for your "but" am I to take it that foreigners have to publish the day after they file but Americans..not. I think you just made my point."

"have to publish"?, Oh dear. Has Europa experienced a change of heart about the universal blessings brought to society as a whole by early as possible publication of patents? Practice what you preach brother, that's all I ask. Again, the US had bona fide misgivings about the early pub system. The "flooding" practices have abated somewhat since the gentlemen's agreements, but let's see what happens if this economic downturn stretches out. fisher --out.

[MaxDrei]

Fisher, your question, Europe, change of heart? Answer: No, and whatever gave you that idea. My theme is "Do as you would be done by" or "reciprocal treatment" or "Beggar my neighbour". No need to explain my answer to anybody with a smidgeon of interest in seeing reason. Mr Heller you understand, right?

Very ironic, Fisher, that you urge me to practise what I preach. Something biblical about motes and eyes springs to mind.

But never mind. I've already got what I wanted out of this thread, thank you very much.

[fisher ames]

Max: you have nothing to worry about. the patent reformers on our Capitol Hill are going to give the rest of the world everything they want to see in our patent laws, and we will get absolutely ZIPPY in return other than the satisfaction the comes with being a good citizen of the world. I feel better already.

[MaxDrei]

Fisher, you jest. Congress isn't able, to pass anything solid and game-changing.

The publication bit: what I mean is that Americans can refrain from publishing until the PTO issues their A publication but, if Johnny Foreigner wants parity with that, he must publish on the same day as he files his Paris Convention priority application. Now an 18 month black hole, between prio date and A publication, which obtains all over the world, is a reasonable attempt to balance fair protection for the inventor with reasonable certainty for the public.

But I'm sure you disagree. Never mind.

[fisher ames]

"Congress isn't able, to pass anything solid and game-changing."

Max, re our Capitol Hill: I do not jest when I say I do not underestimate a grown man capable of wearing a Batman costume in public (you may have to google that one, sorry). I agree in fairplay; everyone should have to show their cards at the same time, and U-boats scare people. I get all that. The early publication "serves lofty goals" crowd though ...grrrr.

[hindsight from the future]

early publication serving lofty goals vs what is left in the quid pro quo for the inventor - how lofty is ripping off the inventor by taking all the pro and giving no quid?