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« The Timing of Patent Grants |
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Posted on Jan 12, 2013 at 02:56 PM | Permalink
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Re: "Thoughts on the recommendation to file before March 16 if possible?"
If the PTO interpretation of AIA 102 [&103] as to prior "on sale" activities, as requirng a public disclosure, is judicially sustained, then the only advantage of filing AFTER March 16 that I am aware of would be a rare situation of what could now be an "on sale" bar or prior art from a NON-public "on sale" bar, that would no longer be a bar or prior art if filed after March 16.
I would be curious if anyone sees any other reason not to file before March 16?
Paul F. Morgan |
Jan 13, 2013 at 08:53 AM
I agree with filing before March 16th if possible, unless you are very clear that there is no likelihood of someone having filed after your invention date, but before your filing date. I see no advantage in filing after March 16th, and plenty of disadvantages. I do not think that "first to file" and "grace period" as interpreted by the USPTO are particularly compatible, either. But I'm sure that will shake out in litigation soon enough.
Jan 13, 2013 at 08:20 PM
Yes, although if all you have before your filing date is a bare conception, without any actual reduction to practice, and are not the first to file, it will only rarely make a valid difference in getting an enforcable patent anyway under 102(g) and its case law [being eliminated for new applications filed after March 16].
Paul F. Morgan |
Jan 14, 2013 at 07:30 AM
Currently your own parent patent (or published app) can qualify as prior art under 102(b) for use in a 103 rejection. You can't escape it as a reference via a terminal disclaimer, unlike if it only qualified under 102(e).
My question is whether this still exists under AIA. I don't know that answer yet. I've always considered this scenario one of the largest glitches in the current law because it stifles further innovation once that year has passed since publication of the parent patent or application. If the AIA allows these references to be overcome via a terminal disclaimer, then there would be a benefit in waiting until March 16th in those situations. But like I said, I don't know that answer yet.
Jan 14, 2013 at 08:50 AM
because it stifles further innovation
If it's really "further innovation", it should be patentable over your own prior art.
Jan 14, 2013 at 09:10 AM
Who says that something has to be patentable to be innovative? Anything to contribute regarding the discussion on post-AIA filings?
Jan 14, 2013 at 10:02 AM
35 USC 102?
Princess Bubblegum |
Jan 14, 2013 at 11:05 AM
Come along with me,
and the butterflies and bees!
We can wander through the forest
and do so as we please!
Come along with me,
to a cliff under a tree.
Where we'll gaze upon the water,
as an everlasting dream.
All of my affections
I give them all to you!
Maybe by next summer,
we won't have changed our tunes!
Princess Bubblegum |
Jan 14, 2013 at 11:10 AM
Interesting take there on the on sale bar, Paul. I agree that applicants not having publicly disclosed their invention in any respect, but who may have commercially exploited their invention more than one year prior to the filing date, should file after March 16. A formally invalid patent application would then be made valid.
Very interesting indeed.
Ned Heller |
Jan 14, 2013 at 02:52 PM
Judith, filing after March 16 would seem to remove 102(g) and 102 (f) prior art. It would also remove on sale bar activities that do not amount to a public use from being a personal bar to the applicant.
The only positive aspect of filing earlier than March 16 would be the potential availability of the use of prior invention to swear behind references. But that has always been a problem, as many applicants do not have the requisite level of proof of prior invention.
I think that rather than making broad statements, each individual case has to be analyzed to determine whether one should file before March 16 or whether one should file after March 16.
Ned Heller |
Jan 14, 2013 at 02:56 PM
102(f) is derivation, which is still going to knock out your patent, just now under the new derivation proceedings.
102(g) prior invention by another is gone, but it is replaced by "any disclosure at all of that other." Given that the prior inventor in 102(g) had to be not secret, or suppressing it, I don't think that the elimination of prior invention gives you all that much. Do you disagree?
I do agree that we will have to make case-by-case determinations. But I think the combination of bringing in foreign activity and limiting the grace period are significant disadvantages, while the elimination of a prior invention by another is a fairly small advantage. As someone else pointed out, there is the potential elimination of non-public sales. Though I'm not sure what that would encompass.
Jan 16, 2013 at 03:21 AM
My experience in FtF and my intuition tell me that it happens very often that people associated with different corporate R+D depts are thinking about much the same technology at much the same time. With FtI, I imagine there is a degree of hesitancy, to file on subject matter that you, in your own head, honestly see as the conception of another. But with FtF, I expect the thinking to me that each will file on what he or she has thought through or reduced to practice, and let the proceedings at the PTO sift and sort out who gets what claim to issue.
If I'm right, then we shall see a rush of filings, as soon as interference is no longer used as the legal tool to sort out who gets what.
As for sales without "making available" the claimed subject matter to the public, I agree that this is a relatively rare situation.
Jan 16, 2013 at 04:49 AM
Princess, your magic spectacles were on backwards. The question was not "Who says something has to be innovative to be patentable?" (for which, your response would have been concise and stellar.
I think that Dave's point is that he believes innovation has a larger domain than patents.
Dave, you might ruminate on the notion of public domain and notice. I would also posit that the SC case of Golan v Holder will strike your interest. Give it a read and let me know what that decision portends.
Jan 16, 2013 at 06:27 AM
"With FtI, I imagine there is a degree of hesitancy, to file on subject matter that you, in your own head, honestly see as the conception of another."
Both with FtI and FtF, there better be more than just a degree of hesitancy if you honestly see the conception as belonging to another. If that be the case, then your inventors' oath is a fraud.
Jan 16, 2013 at 06:31 AM
Judith, regarding 102(f), I am not so sure that derivation will prevent someone from claiming obvious variations under the new law. The current law does. See e.g., OddzOn products.
Regardless, derivation is a limited proceeding that requires a second applicant and is limited in time by a very severe, one-year, statue of limitations that in my opinion makes no sense, but nevertheless exists in the law. In other words, in the most situations where derivation actually occurs, relationships between contracting parties for example, when someone is pirating somebody else's invention and filing for patent application on it, there seems to be no adequate remedy to a third-party infringer. The patent is valid and the infringer has no defense because of the repeal of 102(f).
Regarding prior invention as prior art, indeed the law required that the invention be disclosed in such a manner as to make it available to the public. But, but the date of such prior art is important as the date is the least the date of reduction to practice, which could be up to two years earlier than the date the invention was disclosed to the public. This has got to be significant.
I think the more important consideration is 102(f) in the cases where some prior invention by a contracting party is made known to the inventor, but where the inventor makes an obvious improvement and files a patent application on it. Under AIA law, OddzOn products has over been overruled, and the patent is valid. This is an important consideration.
Ned Heller |
Jan 16, 2013 at 08:23 AM
Ned thanks. In my posting upthread, I was assuming that rival filers on the same core conception will all realise it in different ways so will have distinctly different written descriptions. Each can legitimately suppose it is "first to file" in respect of its particular contribution to the art, and each cam legitmately supose that is peculiar contribution to the art is not "derived" from anybody else.
I understand that, in the USA, other than in ROW, each will face obviousness objections built on the written description of all earlier as yet unpublished filings. Nevertheless, one thing is clear: no filing, no patent. So, under FtF, better to file, and see what comes out of it.
Jan 16, 2013 at 08:31 AM
Further to Ned's comments, derivation is a poor substitute for controlling what 102(f) previously covered.
Derivation fails to cover a multitude of situations including deriving from someone else who may not believe inthe patent system and refuse to file their own patent, as well as a multi-party incident wherein an intermediate inventor may lose out to a non-inventor who derived from someone who has not (or like the first example, will not) file.
Further, the change in law utterly fails at one of its prime reasons for being instituted: to reduce the complexity of an interference action. Derivation actions will, if anything, be more complex.
More complex, more hazardous and less protection - the epitome of bad law.
re: "I think the more important consideration is 102(f) in the cases where some prior invention by a contracting party is made known to the inventor, but where the inventor makes an obvious improvement and files a patent application on it." - the congressional record supports the notion that this was explicitly contemplated and that patenting of such obvious improvements should not be denied if in fact the prior invention improved upon - even if by another - was not in the public domain.
Let's call it "Inventor-Lite" and it is yet another gift in the AIA to Big Corp.
Jan 16, 2013 at 08:38 AM
"Nevertheless, one thing is clear: no filing, no patent."
This is a truism regardless of FtI, FtF, or FItF.
"In my posting upthread, I was assuming" - Then actually say that, because what you said was distinctly different.
Jan 16, 2013 at 08:44 AM
I am glad to see that the URAA included a reliance clause for users of the works to have a phase-out grace period. Without that clause, the Takings Clause would probably have been a show-stopper.
Jan 16, 2013 at 09:08 AM
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Jason Rantanen, Associate ProfessorUniversity of IowaCollege of LawSSRN Articles
Occasional guest posts by IP practitioners and academics