When have Novelty Rights Been Important?

In the next few days, I’ll be distributing a draft of my working paper on the role the invention date in ex parte prosecution.  I’m looking for citations for the following proposition:

Supporters of invention-date-based novelty rights argue that such rights, although rarely asserted, make a big difference in big cases. 

Ideally, I’m looking for cases outside of the interference context that turned on the ability of a patentee or patent applicant to antedate would-be prior art. Thanks for any help!!

45 thoughts on “When have Novelty Rights Been Important?

  1. 45

    Dennis: I concur with Mr Morgan. I took patent law from Irving Kayton and I distinctly recall his remarking in class in his unequivocal fashion that there was not a valid patent out there with a 131 affidavit in its history.

  2. 44

    What American Cowboy writes makes big sense to me. But I’m only looking in from Europe. I had always supposed that the 131 Declaration was to be avoided but, having read Cowboy, I can see its attractions.

    All grist for the lawyers’ mill, eh? The more uncertainty as to the outcome, the more doubt which side will emerge with the rights, the more work for lawyers, eh?

    There are plenty of patent litigators and international law firms who are frustrated with the degree of legal certainty in European patent law, and which would love to have more scope for obscure evidential issues to be decisive for the outcome of “interference” situations (of which at the EPO there are multitudes).

  3. 43

    Paul Morgan said: “a 131 declaration merely swears behind the reference’s filing date, not its invention date.”

    I was taught to avoid swearing behind if you could distinguish, but once the FedCir started finding ways to use every argument you make as a way to limit the scope of your claim during claim construction, I decided to rethink that policy.

    Also, I have several times been in the posture of the patent challenger and found that digging up the earlier evidence commensurate with the sworn-behind date is not as easy as this posting would make it sound. If the sworn-behind inventor is not cooperative, dead, thrown out his old paperwork, yada, yada, you could be out of luck. Even if the sworn behind reference did have an earlier invention date, you can’t get admissable evidence of it, since it needs to be clear and convincing and corroborated. As the years go by after the rule 131 filer filed his affidavit, the chance of finding this evidence gets smaller and smaller.

    So swearing behind a reference is not as lousy an idea as some have made it out to be.

  4. 42

    Another common misunderstanding is assuming that once a reference has been “disposed of” by “swearing behind” it with a Rule 131 declaration [instead of being able to distinguish over it] that that ends the matter. On the contrary it becomes a neon road sign in the file to anyone questioning the patent. First, to look for fatal defects in the declaration or its factual basis, and secondly to see if the reference sworn behind has an earlier invention date [as it often does], because a 131 declaration merely swears behind the reference’s filing date, not its invention date.

  5. 41

    The frequent confusion of 102(g) and its case law, including its use in Rule 131 declarations, is one argument against it. For example, contrary to one apparent suggestion, a Rule 131 declaration is defective if not inequitable conduct if the reference being sworn behind has any equivalent {including the 18 month WIPO publications of PCT cases) in any language published more than a year before the subject application filing date. One cannot swear behind any 102(b) bars.
    Likewise confusing the difference between the requirement for substantially continuous diligence prior to a completed actual or constructive reduction to practice with the requrement for the absence of supression or concealment thereafter.

  6. 40

    American Cowboy

    “I think there is a case where after abandonment the inventor started work on the invention again, but even then he only got the date of restart.”

    That’s what I meant by back to the date of diligence.

    Actually, I have not looked or thought about it in awhile, but I believe you are correct, where there is an actual RTP, you do not lose your RTP date, but I thought lapses that short could be a loss in an interference.

  7. 39

    MM,
    Your last post was to the point, and it appears you can learn something from entrepreneurs. A “well-tuned procedure” is not a ‘one size fits all’ solution – it depends on circumstances of each startup, as David Boundy explained above. One example of such a procedure and its relation to disclosure events is described in Steve Perlman’s presentation linked above. MM, let’s be specific; Please explain how you would have advised your client (if you have any) to handle filing patent applications in such a scenario.

    From your posts above it is apparent that you perceive patenting as a monolithic universal process. You need to study more. Your inability to shed your ‘one size fits all’ philosophies appears so ingrained in your thinking. Your post in a companion thread above is telling: “that’s why I support a robust single-payer healthcare system. The present system in the US has effect of locking people into jobs that they might otherwise leave because they need their employer to pay their health insurance.” MM, open your eyes and learn. There are many other ways to solve the health insurance employer-lock problem other than imposing the single payer system. Have you studied those proposals?

  8. 38

    I filed many 131 Declarations when the prior art had a long chain of international priority and involved a non-English (e.g. Japanese) foreign language publication. The opportunity to swear back gets extended by 30 months when the prior art is using the PCT and not publishing in English. If the same application were filed immediately in the USPTO, the swearing back period would be shorted by up to 30 months.

    Because high value inventions justify the cost of PCT filing, the opportunity to swear back presents itself more with high value inventions.

  9. 37

    Lionel, your statement of “sitting on an application for a week or less has been ruled an abandonment.”
    is news to me; can you cite a case for that proposition?

    “You can only get a date back as far as you can show diligence.”
    This doesn’t sound right, either; if you have abandoned an invention (i.e. 102(c)) you lose its invention date. I think there is a case where after abandonment the inventor started work on the invention again, but even then he only got the date of restart.

  10. 36

    There’s a much more succinct way to put this. Sorry to redund.

    It’s very seldom sound for a business lawyer to advise the client to zero out risk in one area, because that usually means increasing risk in some other area, or driving up costs more than the reduction in risk (don’t pay more in insurance premium than the insurable loss).

    Filing all applications to meet EP zero-disclosure deadlines can be wise for some clients, and is necessary for those that have international businesses. But that’s an uncommon situation for a startup – a U.S. patent and control of the U.S. market will keep them in business, at a small fraction of the cost of the alternatives that you see discussed above by some.

    Now you see my gripe with most patent attorneys. Because most law firm patent attorneys only work on patent matters, they’re often insensitive to the cost- and risk-balancing needed by a whole business.

  11. 35

    Dennis: Surely, you’re not asking for us to provide you with the patent numbers for cases on which we’ve worked, and in which we’ve sworn behind a reference; are you?

  12. 34

    Lionel, Cowboy and Malcolm are all correct, you do run some risk by delaying filing, and in some cases some startups do file very early in the process.

    But “some risk” is not a good way to make rational business decisions on a blanket basis. The cost-benefit-risk tradeoff has to be made on the facts as a whole, as best you know them at the time. For most startups, the likelihood of losing a patent by delay of a few weeks or months is tiny compared to the cost of having to file on everything just because the law requires filing so early that too little information is available.

  13. 33

    RK American startup entrepreneurs and inventors have developed expertise and well-tuned procedures for doing their innovation business under these protections and constraints imposed by the enablement requirements of Section 112.

    Again, the “expertise” and “well-tuned procedures” practiced by my “start-up” clients and those of my peers is to file as if the system was a first to file system, i.e., you file the best application you can as quickly as possible and don’t disclosee to third parties until you’ve got something filed.

    Is the real complaint here that the “strategy” of filing provisionals, abandoning them, and refiling them will be challenged under the FItF system?

    If not, Ron, why not set out exactly what the “well-tuned procedure” is that you are referring to? I’m curious what you are referring to. For example, please tell me what the “well tuned procedure” is for protecting the IP of a client who has a lot of half-baked concepts and a shortage of resources such that it tends to take more than a year for the client to obtain data to unambiguously enable a “valuable” (i.e., not terrifically narrow) claim.

  14. 32

    American Cowboy

    “Lionel Hutz, your comment “You should still be rushing under FTI or risk losing on a 102(g). If you spend a week not working on your app, there goes your RTP date” ignores the facts that I started with: the inventor already has an actual reduction to practice. He came to see you and showed you his prototype! You don’t lose the reduction to practice date there by any delay.”

    My understanding is yes you can lose your RTP date, or at least its value. I believe sitting on an application for a week or less has been ruled an abandonment. You can only get a date back as far as you can show diligence.

  15. 31

    Oh and supplementary to that last offering, I should point out that the patents system in Europe is barely older than the 20 year of a patent. Before then, Germany had central claiming (like: claim the Best Mode) while England had peripheral claiming (like: define the perimeter fence). Polar opposites. So, we need cases in Europe where the litigated patents were written within the last ten years please. Then I think we will see that the uncertainty as to scope of protection varies more, judge to judge, than it does, jurisdiction to jurisdiction. But by how much, in each jurisdiction?

  16. 30

    American Cowboy makes a great point, namely:

    “the public is entitled to clarity in claims so they know what the bounds of protection are”

    Hear him, hear him.

    I am impertinent enough to ask: is the public getting that to which it’s entitled (after those above-mentioned hundreds of years of refining the patent law)? Let’s consider 3 jurisdictions: USA, England and Germany and let’s ask some who litigate world-wide. Perhaps Pfizer, J&J? Anybody?

  17. 29

    By the way, as between the first inventor and the second inventor who was first to file, I don’t see a whole lot of difference in their equitable claims to a patent. I see folks get worked up about it, but really, the issue is who had the non-obvious idea first and took the subsequent actions needed to be in the dispute in the first place. Neither one is a rapist or Ponzi-schemer, so the differences in their relative “merits” are inconsequential.

    The important thing, in my view, is how the rules affect behavior. Our current rules permit compliance with demands for high-quality patent applications, but a rule that would penalize taking the time to do the job right would result in the job not being done right. It is RARE that anyone expects to be in a priority contest, but every applicant knows his case is subject to scrutiny for compliance with sections 101, 101, 103 and 112, so he/she should be allowed the time to get their cases into such compliance without having to skip the kids soccer games.

  18. 28

    I thought sending a wad of paper to the PTO was what provisionals were for 😉

  19. 27

    Dennis,
    Perhaps you should consider the effect FTF might have on reducing violent crime? Surely everyone remembers the QuickTurn v. Aptix case? Perjury, obstruction of justice, solicitation to murder a federal judge? It wouldn’t have happened if we were a FTF jurisdiction…

    link to law.com .

  20. 26

    Lionel Hutz, your comment “You should still be rushing under FTI or risk losing on a 102(g). If you spend a week not working on your app, there goes your RTP date” ignores the facts that I started with: the inventor already has an actual reduction to practice. He came to see you and showed you his prototype! You don’t lose the reduction to practice date there by any delay. Yes, if the delay is too long you could be said to have abandoned, but I am not talking about that kind of delay; just the kind that allows you to do a good job of searching, consulting with the client, drafting and revising before you send a wad of paper to the PTO.

    Max has made the point in other columns and above about how a systeme that awards patents to first to file applicants must make allowances for their need to rush to file and therefore does not demand very full disclosures, best mode, carefully crafted peripheral claims, and the like.

    If the US patent system, together with adopting FTF, adopted loosy-goosy drafting rules, it might make sense, but you have hundreds of years of precedent to disregard in the process.

    And, I might add that the public policy of having better disclosures and more accurate claims is not to be sniffed at. Do we expect the FedCir to lightly give up its mantra that the public is entitled to clarity in claims so they know what the bounds of protection are? Won’t that have to be the result if we adopt European application standards that are necessitated by a rush to file?

  21. 25

    In response to the above, presumably what Dennis wants here, as some of us have provided him with, are citations to cases in which a defense of prior invention under what is now 102(g)(2)was successful in patent litigation, not the PTO.
    This defense [based on otherwise undiscoverable secret prior art dates unlike any other 102/103 art other than the even rarer 102(f)] is rarely asserted and often not even fully understood.

  22. 24

    Dennis,

    Check out Digital Control v. The Charles Machine Works at: link to caselaw.lp.findlaw.com . A successful Rule 131 in prosecution which created a Rule 56 issue in litigation.

    BTW, I agree with what Dave Boundy and Ron Katznelson said. FITF is brutal on innovative small businesses, especially start ups.

  23. 23

    Dennis,

    Take a look for these:

    Refac Electronics v. R.H. Macy
    Patent on “blinking colon” on digital watches
    Patent owner sued infringer, who proved invention by another with documentation
    Patent owner had only uncorroborated testimony of earlier date – lost

    Hybritech v. Monoclonal Antibodies
    Infringer tried to invalidate patent on assay by showing prior invention by a third party
    Infringer had undated graphs and notes
    Patent owner had lab notebooks, signed and dated, and witnessed – won

    Sorry I don’t have the cites at hand.

  24. 22

    Would anyone care to define “invention-date-based novelty rights”? I originally thought it meant what the plain and simple meaning of the words meant. However, Dennis writes “outside of the interference context” and implies he wasn’t referring to swearing behind the reference.

    What does he want? A district court invalidity challenge by swearing behind the reference in that forum? He seems to want somthing other than swearing behind a reference during prosecution or winning an interference.

  25. 21

    PURDUE PHARMA v. BOEHRINGER INGELHEIM. 237 F.3d 1359, 1365-1366 (2001).

    During prosecution of CIP application for oxycodone, the Examiner suggested filing a TDS and amendment to overcome a rejection based on the parent. In an infringement action against Boehringer, Boehringer counter claimed invalidity of the CIP (and related applications) as being anticipated by the parent (inventorship was not shared). The district court properly found conception and RTP based upon expert testimony and three exhibits. The CAFC affirmed.

    Sounds like a great paper… gl finding more relevant case law.

  26. 20

    Dennis: “Supporters of invention-date-based novelty rights argue that such rights, although rarely asserted, make a big difference in big cases.

    I am unaware of such arguments and any characterization of the issue as being visible “in big cases” misses the mark. Do not let FTF/FITF proponents confuse you. Their focus on observables in patent litigation or interferences reflects a profound misunderstanding of the arguments made by supporters of invention-date-based novelty rights. These rights have far more important and ubiquitous results than making a “difference in big [court] cases.” Only 1.3% of patents are litigated. Three out of four of these cases settle and only several hundred cases are reported per year. The substantive manifestations of invention-date-based novelty rights are largely imperceptible in these reported cases. First, interferences and lawsuits reported in the public domain are only the tip of the iceberg of all patent disputes and licensing negotiations that involve discovery and exchange of invention-date-based information. Parties have a lot of experience in gauging the quality of such evidence and using it. Second, these priority rights are manifested by the much larger number of applications that are vetted and do not get filed for the reasons David Boundy explained above.

    Third, the current availability of procedures wherein corroborated evidence of conception and diligent reduction to practice can sustain inventors’ right to the patent, have tangible salutary consequences affecting firms’ behavior, practices and procedures that would not have been adopted under a filing-date-based novelty system. Their existence is a major impetus to investments in inventions. For example, the current available protection is often an effective deterrent against misappropriation of inventions disclosed during strategic partnership or licensing negotiations. Under these protections, an inventor is empowered to seek strategic manufacturing and distribution partners during the early development phases without fear of disclosure. In fact, even the act of private disclosure and negotiation with such potential partner is considered diligence in reducing the invention to practice. Scott v. Koyama, 281 F.3d 1243, 1249 (Fed.Cir. 2002) (Junior patent applicant’s activities, that were focused on selection of company to build manufacturing plant to produce the invention were evidence of “reasonable diligence” by junior applicant to reduce invention to practice).

    American startup entrepreneurs and inventors have developed expertise and well-tuned procedures for doing their innovation business under these protections and constraints imposed by the enablement requirements of Section 112. Changing the U.S. system to the uncharted waters of FITF would require lengthy learning curves based on development of new case law, new procedures and new strategies over many years. In this process, U.S. R&D managers will likely “trip,” make procedural mistakes and thereby cause additional irreversible loss of patent rights.

    Dennis, as David Boundy said, you will be missing the central issue by looking where your light points to. In order to avoid mischaracterizing the opponents of FITF, look to startup entrepreneurs and inventors’ reasoning for sticking to our Invention-date-based system. It has very little to do with what you are looking for. See link to bit.ly.

  27. 19

    American Cowboy,

    You should still be rushing under FTI or risk losing on a 102(g). If you spend a week not working on your app, there goes your RTP date

  28. 18

    Swearing behind is a last resort during prosecution and I always consider a patent that was only allowed because a reference was 131ed to be a weaker parent.

  29. 17

    The fact of the matter is, it’s hard for inventors to show diligence between conception date and filing date. Or, I should say, it’s not hard to find a gap between conception and filing, especially once the preparer is hired.

  30. 16

    David Boundy, thanks. I suspect we are of one mind, namely, that any attempt to “harmonise” by compromise is not harmonising anything but is destroying 200 years of development of the US patent system, to where it is today. Readers, don’t I always say that the US should either stay with what it’s got, or swallow Europe whole, but not try to split the difference in what I mischievously like to call a “foul compromise” (because it sounds like the habitual German expression “faul Kompromiss” but doesn’t mean the same thing).

    Readers, is there a misconception here. Do Americans seriously think that if the US “splits the difference” ROW will then move just as far in the opposite direction, allowing all the world to harmonise on FItF (the system we are so busy trashing in these columns already)?

    Robert, I’m with you. Take two “diligent” parties that invent independently. The exclusive rights will go to the later of these two publishers, provided he was first to invent. I never did see the logic of a system that allows folks to publish later, yet still be given the dominant monopoly rights. Where’s the sense in that?

  31. 14

    I’m not sure what the data would show. Under the current system, filing diligence is not rewarded. So, there is incentive to sit on applications and not exercise instead of getting them drafted and filed promptly. If we had a system that actually rewarded diligence, I’m sure that we’d have a lot fewer inventors who are having to file 131 decs to recover from the fact that they sat on their application for a year or so.

  32. 13

    “If you’re suggesting that the U.S. should throw its whole patent system overboard and adopt EP law wholesale”

    that’s what Max always suggests

  33. 12

    In the future, I won’t be able to give this advice. I will have to tell the client “As a practical matter, you have to assume that there is no grace period. We have to file an application before you can talk to investors, manufacturing partners, co-designers, anybody.

    Many “start-up” clients operate this way now, to preserve foreign filing rights.

    Still not sure what all the fuss is about. Some folks seem to want to play on the big stage so they have a chance at the big bucks, but are incapable of putting on their own make-up.

  34. 11

    Max – I don’t understand your point – are you opining re anything that exists in the real world (or is at least proposed), or are you opining on a wholly imaginary state of affairs?

    Our S.515 (our pending statutory amendment) proposes only to weaken the grace period, it makes no change to the standards for enablement of a disclosure and prior art reference. Thus, an opinion on a hybrid between S.515 and an EP enablement-of-reference-and-specification law is not particularly enlightening re anything in the real world.

    If you’re suggesting that the U.S. should throw its whole patent system overboard and adopt EP law wholesale, I have no opinion – except to note that, again, no one’s proposing that, so proposing it or discussing it doesnt have any relevance to the real world.

    If I missed your point, a clarification would be welcome.

    I think you do make an important point, though, and rather elegantly – our balance of priority rules, enablement rules, best mode rules, etc. have all grown up together though 200 years of balance, and work together very well. And I assume (with no basis to know) that the EP law, taken as a whole, works pretty well too. What I don’t understand – and no one advocating this bill has been able to explain — is how incompatible EP and US features are supposed to work as an integrated whole. There are many policy balances and tensions that work just fine in either side of the Atlantic, but they clash when you try to mix and match.

  35. 9

    Excellent contribution from Boundy. I note in particular:

    “Your advertising brochures and similar stuff aren’t up to § 112 ¶ 1 standards, and your engineering tech documents at least need a review to make sure they are–you’re going to have to pay me quite a bit of money even to file a provisional.”

    ..which can fuel my point about nobody ever knocking out a MechE or EE filing in Europe for insufficiency (lack of enablement) and throw further light on why an ROW SME has less difficulty with FtF than you might suppose.

  36. 7

    Dennis –

    I’d suggest that this is a classic case of looking where the light is good, instead of where the thing is likely to be. The change in the law will have its greatest effect on applications that are not filed today (and therefore by definition will not show up in your data set) but instead show up in the far higher abandonment rate in Europe.

    The real issue is the one-year grace period that allows inventors to sift out which applications to file on and which to let go. Over my years of practice, I have often advised a client “You have a lot of good ideas here, but you can’t afford to file on all of them. Give it a few months, let the technology sort out, then we’ll file on the ones that matter, and save you a lot of money on the ones that don’t, and do a much better job on the ones that do.” Under the balance of costs and risks of current law, this was good advice – not risk free on the patent side, but a big reduction of risk on the bankruptcy side.

    The new legislation makes the one year grace period extremely delicate. In the future, I won’t be able to give this advice. I will have to tell the client “As a practical matter, you have to assume that there is no grace period. We have to file an application before you can talk to investors, manufacturing partners, co-designers, anybody. If any of them leak (even with an NDA in place) and the information flows anywhere else, it will be our burden to show that the disclosure originated with us — a practical impossibility. So we have to preempt that, and file on everything. Your advertising brochures and similar stuff aren’t up to § 112 ¶ 1 standards, and your engineering tech documents at least need a review to make sure they are–you’re going to have to pay me quite a bit of money even to file a provisional.”

    Slide no 35 here
    link to j.mp
    shows how the current one-year grace period allowed this starup to cut its filings by 8-to-1, relative to FiTF.

    Maybe “cases” that show the ability to antedate prior art tell you something, but they’re going to have severalfold more noise than signal.

  37. 6

    There’s always good old Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572 (Fed. Cir. 1996) (to avoid a catologue prior art reference).

    Also consider Invitrogen Corp. v. Clontech Laboratories, Inc. 429 F.3d 1052 (Fed. Cir. 2005)(whether lab work was anticipatory under 102(g).

  38. 5

    fellow patent practitioners — about what percentage of your cases do you file a declaration to swear behind a reference? 10%? 5%?

  39. 3

    Don’t leave out of your analysis the fact that for EVERY case where there was an actual reduction to practice prior to filing, the applicant and attorney had the date of it to rely on and so did not have to rush to put together a patent application in willy-nilly fashion to avoid the risk of a loss of rights.

    Being able to leave the office early to watch your kid play soccer is something of value that should not be trashed because you need to get this filed TODAY simply because the “harmonization” gurus want us to be like MaxDrei and his buddies.

  40. 1

    unless you’re satisfied with being extremely underinclusive, you’ll need to search file histories for instances in which an applicant has successfully swears behind a reference.

    If you don’t include those examples, of which there are many, your analysis will be close to meaningless.

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