As a site for referral and contemplation, I wanted to include the text of the newly drafted statute 35 U.S.C. § 102.
Sec. 102. Conditions for patentability; novelty
(a) Novelty; Prior Art- A person shall be entitled to a patent unless—
1. the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
2. the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(b) Exceptions-
1. DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
A. the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
B. the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
2. DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS- A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if–
A. the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
B. the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
C. the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
(c) {CREATE ACT Save for later}
(d) Patents and Published Applications Effective as Prior Art- For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—
1. if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
2. if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.’.
Repeat:
Does anyone have a link to Wegner’s article on the effective date of FITF?
Specifically, why does he contend it does not apply to certain claims in an application which is otherwise covered by the new Act?
I think you are right.
As to Wegner’s piece discussed by Anon, I have no idea why he would say the claims that are entitled to an earlier priority would be governed by the old law. The statute on its face seems to say something different entirely.
If anyone has a link to Wegner’s piece, we should look see his views before we make up out mind here.
Julie, I do not agree with Ned on this exact point.
Hal Wegner has written an article that I do not have at my fingertips currently. In that article he laid out the rationale – given by the Office – on why CIP’s that had at least one single claim in common with an application prior to March 16, 2013 at the time of filing of the CIP would have to be examined under the old law. That holds true for duplicate claims that are later dropped in a preliminary amendment. The only trigger to engage the full force of the old law was “a claim in common.” CIPs will be a massive source of endrun around the March 16, 2013 date.
In other words, the transition process after the final trigger date will be excessively slow and all CIP’s will enjoy the current law workings. With the current backlog and the expected surge prior to that date one can readily imagine a mixed bag of law being applied to applications for well over a seven year period. If I recall correctly, there are still application in process enjoying the last priority date change legislation – only a handful, but some still exist.
Thank you Ned. Please confirm my understanding: This is a reason to NOT file a CIP after March 16, 2013. You would be better off filing a straight continuation off of the parent, and filing a separate brand new application claiming the new matter. If a CIP were filed after March 16, 2013, containing both CIP claims and straight continuation claims, both claim types would be subject to the new law. And, to your point, even if the CIP claims were cancelled, the straight continuation claims are still subject to the new law.
“If any claim, at any time, cancelled or not, has an effective filing date on or after March 16, 2013, the new law applies.”
this of course can work in the other direction, for example a CIP that can clsim prioruty to an pre-change app adopts the old law, even if the conecting material and claim are later dropped.
In other words, ther are ways to “sneak in” new matter.
This whole provision needs elimination corperations need to file a initial disclosure document showing complete conception like any one else. additions should be allowed afterwards for 2 years to perfect manufacturing or compounds but conception should award the patent otherwise the playing field is tilted to big business and inventors cant sell there conceptions
(n) EFFECTIVE DATE.—
(1) IN GENERAL.—Except as otherwise provided in this section, the amendments made by this section shall take effect upon the expiration of the 18-month period beginning on the date of the enactment of this Act, and shall apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time—
(A) a claim to a claimed invention that has an effective
filing date as defined in section 100(i) of title 35, United States Code, that is on or after the effective date described in this paragraph; or
(B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.
Julie, the listed priority date is not determinative. If any claim, at any time, cancelled or not, has an effective filing date on or after March 16, 2013, the new law applies.
In other words, watch out for new matter.
They need to take out all issued patents with no new intellectual materials detected and put them in a seperate data base this will cut complexity of deravation discovery. Ive found corrupt file insertions of advanced documents before and during prosecution is rampant and a total disincentive to file at all. Immediate document discloaure program on fileing is the only way to end this.Deravation or patenting around by the public after patent publishing is another disincentive to file needing correction
I understand that the effective date for application of the new 102 is March 16, 2013. I would think that any applications filed after that date, but which have foreign or domestic priority before March 16, 2013, would be subject to the old law. Could someone please point out where this is stated in the new law?
Thank you for your help.
is it pronouced “court-knee” “court-nay” or “cour-te-nay”
Hi, simple questions, see my post below on "implied derivation." Without some kind of "obvious variation" exception it seems to me that we would not have an effective grace period at all. If all one would have to do to defeat someone else's patent would be to publish an obvious variation of the inventors prior public disclosure, we would not have a grace period. The grace period we would have would be so easily bypassed as to make Congress's intent to provide a grace period clearly frustrated.
From: TypePad
This method of evidencing is reminesent of back dating inventions to claim priority except on the front side . Its less credible than what should be the normal stronger evidencing method of steping to the microphone at all federal buildings and video coresponding recording at uspto after experation of 30 days notice of intention to disclose. initial document disclosure program needs to return to with original low cost for indegent inventors. also indegent patent issuances with lean due on sale of patent.
Would rather not. But if you drop over to the Patent Watchdog blog run by Eugene Quinn you will find the same misapprehension displayed.
I’d be interested to know what the split is, between those who think new 102 graces independent publications, and those that think it doesn’t. Is it 50:50, I wonder.
Ned,
Why would the courts do so? The new law does not include “obvious variations,” does it? Can the courts expand the law like you suggest?
In a more general sense, I am having trouble with the law as written in that as I read (a)(1) and (a)(2), the object of both sentences is “the claimed invention.”
How does one have a “claimed invention” in a “public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention,” that is, before any claims have been written?
There is a possiblity that there are no claims at all in the “claimed invention before the effective filing date” at the supposed time of comparision.
Also, I think that Mr Boundy’s reply of a specific specious as the only thing possible to be covered, it seems that the specific specious must be explicitly covered. A claim to a genus is not the same as a claimed invention to a species. So unless a whole genus is in publis use, or on sale or otherwise available to the public, there will be a mismatch between the claimed invention and the product that is “out there.”
MaxDrei,
Can you share which Boston firm had that Newsletter?
Thanks,
Anon, I think, rather, that 102(a)(1) is a rewrite of 102(b), adds the catch all, and eliminates "in the United States" and "this or foreign country."
Anon, "Sorry Ned, I am not convinced by your argument.
102 has been completely rewritten. Do you at least agree to that simple fact?"
No. Printed publication, public use and on sale are carried over.
Please keep the gushing to a minimum, there’s enough of it around here already…
Ned,
My reply has beeen eaten three times now and I do not have time to figure out why.
Suffice to say though that your premis of “the new law is very much like the old” is just not true. This is a major revamp, and has been recognized at the onset by Congress as such.
102(a) does not make the distinction between personal bar and absolute bar that you want it to have. It just does not do so.
Sorry Ned, I am not convinced by your argument.
The following is a quick recap of a post that was eaten:
102 has been completely rewritten. Do you at least agree to that simple fact?
Statutory construction overrides the case law that you want to bring in from the old. In fact, read the background on why prior user rights were expanded – that explanation dovetails with the non-personal bar aspect of the new 102(a). If you want a meaning other than the plain meaning of the words chosen, it is you that must supply the foundation of such a position. And that foundation must come from the new law or the congressional record surrounding this new law. Merely passing a conclusory statement about absent specific words to the contrary will not support your belief of what the proper interpretation should be. With such a new law as 102, the plain meaning of the words trumps any “reading into” that you are attempting to do. Rather than having the opposing view supply specific words to the contrary, it is you that must supply some type of grounding to read the words in a way other than their plain meaning. Simply put, there is no indication that the list of 102(a) is meant to be read with some terms a strict bar and other terms a personal bar. Unless you can support such a reading from the law itself or the congressional record, you are merely overreaching without a foundation.
There is no such foundation in the new 102(a). It is as simple as that.
Sorry Ned, I am not convinced by your argument.
102 has been completely rewritten. Do you at least agree to that simple fact?
Statutory construction overrides the case law that you want to bring in from the old. In fact, read the background on why prior user rights were expanded – that explanation dovetails with the non-personal bar aspect of the new 102(a). If you want a meaning other than the plain meaning of the words chosen, it is you that must supply the foundation of such a position. And that foundation must come from the new law or the congressional record surrounding this new law (old case law is pertinent to the old 102 – not to the new 102).
Merely passing a conclusory statement about “absent specific words to the contrary” will not support your belief of what the proper interpretation should be. With such a new law as 102, the plain meaning of the words and of the structure trumps any “reading into” that you are attempting to do. Rather than having the opposing view supply specific words to the contrary, it is you that must supply some type of grounding to read the words in a way other than their plain meaning. Simply put, there is no indication that the list of 102(a) is meant to be read with some terms as strict bars and other terms as personal bars. Unless you can support such a reading from the law itself or the congressional record, you are merely overreaching without a foundation.
There is no such foundation in the new 102(a). It is as simple as that.
anon, the new law is very much like the old. "On sale" was listed among items of prior art in 102(b). Even so, it was never interpreted to be prior art to third parties. It was always considered to be only a personal bar.
The drafter must have known this. They must have drafted with knowledge that putting "on sale" in a list of prior art would NOT be construed as a specific intention to change the current law that "on sale" is not prior art to third parties.
Absent specific words to the contrary in the statute itself, no other interpretation can be proper.
MaxDrei,
The “carrot and stick approach” suggestion you have made does make further sense when one considers that prior user rights have been substantially increased. One way of looking at this move (increased prior user rights) is that the stick is lessoned to the point where the “punishment” for delay is that the delay-er cannot obtain a patent himself.
Of course, we both know that the unintended consequence of this is a weaker patent system and a stronger trade secret system.
Ned,
I think DP has a much stronger statutory construction than the one you offer. As DP mentions, each item in the list of 102(a) is a bar item. That much is clear. There are a few things that raise exceptions to the bar, and those are in 102(b), with 102(c) and 102(d) outlining additional types of exceptions and understanding of the bar items of 102(a). But there is nothing anywhere to suggest, as you attempt to do, that the list of 102(a) is a mix of bar items and “personal” bar items. Nowhere is there support for such an idealized assertion.
I see no way for the selective choice of meaning for an item from the list of barring events to label that particular item a non-barring event. To me, it appears that only with wishful thinking can you arrive at that conclusion.
Likewise, the belief of incentivizing public disclosure is greatly undone by the expansion of prior user rights. You are correct that this scheme does in fact incentivize the opposite – but that does not change what the law actually says. One does not read the law as one wants the law to be, but rather, the law is read as it is actually written. The fact of the matter is that bad law does get passed and this is bad law and has passed. No amount of wishful thinking can change what the law actually says now.
I totally agree. The new law needs to presume derivation with respect to obvious variations from a "public disclosure". If the law does not make this presumption, the law is toothless and will frustrate the whole point of a grace period.
From:
Good morning Ned,
It looks like you are inching closer to understanding the points being made about independent invention and when the safe harbor of disclosing prior to filing may not be the same safe harbor that we had under the old 102/103.
Also keep in mind with you rpath towards “presumed derivation” that as the law will be, not only is derivation not assumed, but proving derivation will be difficult as the procedural aspects are lacking (Dave Boundy phrases this much more clearly).
This new law really does have a sizable dose from the Infringers’ Handbook.
Simply, yes.
But, as you suggest, any other interpretation in this context would be illogical . Therefore, I suggest, that the courts will adopt the most logical interpretation.
From:
Presumed derivation
The prior publication of A will, under the new statute, remove as a reference a later publication or patent application disclosing A. However what if they later publication discloses not A, but B. And further what if B is obvious from A. I would suggest that unless the statute also automatically removes B, the statute would be toothless against third parties publishing obvious variations which would deprive the first discloser of a patent. Derivation proceedings should not be required, only that B be demonstrated to be obvious.
Max, check my reply below to dear Prudence.
Dear Prudence , the current §102 simply list “on sale” among other items which are prior art. There is nothing in the current statute that would indicate that “on sale” is intended to be only a bar, and not prior to third parties .
Therefore, listing “on sale” among other items that are prior art should imply nothing.
Moreover, limiting the preclusive effects of prior art to third parties to only that subject matter in the public domain will incentivize public disclosure. Allowing private information that is not public to invalidate third-party patents wouldn’t incentivize the opposite, trade secret use. The policy objectives therefore are backwards in the system you hypothesize.
So Prudence, is the sense of Congress one of both carrots and sticks. A carrot to those who are first to make enabling disclosures of new and improved technology available to the public. A stick to beat those who keep their improvements secret, stripping all their underlying inventions of any patentability, as soon as one year from their first offer for sale.
Makes sense Ned, doesn’t it?
But does it bring any clarity, about what is patentable and what is not? I suspect not.
“The reason I say this is that I do not believe that the basic law regarding “on sale” has been repealed.
There is a substantial school of thought that if the law cannot be interpreted in any other way but that a trade secret user could still obtain a patent in the United States after a year of secret commercial use, then the statute would be unconstitutional on their Pennock v. Dialogue.”
I am not sure that you need a “repealed” to substantively change the law surrounding “on sale.”
In general section 102(a), and 102(a)(1) in particular, deal with fundamental bars to patentability that affect all users of the patent system. It does not make sense to me, given that this 102 is a major rewrite of the old 102, to carry along any of the old case law unless that law is compeltely unaffected.
Any law on “on sale” fails to pass this test.
Since the plain reading of the new statute merely lists a string if items that raise a bar, and some of the conditions explicitly invoke “public” while others do not, I must conclude that those not explicitly specifying “public” are not limited to “public.” The absence of the explicit term clearly indicates that “on sale” – for the bar effect – includes both public and private “on sale” events. The only way to confuse this new law is to follow the old law, which is not appropriate for the whole section 102 rewrite.
Further, there is nothing in the plain language of the statute to indicate that the bar to patentability is strictly limited to that party who offered an item “on sale.” The “on sale” listing appears as just another (equal) term to the rest of the bars, and thus no special treatment (e.g. making it a personal bar) is indicated by the plain language. To read more into the plain language is impermissble.
Lastly, the Supreme Court as recently as in Bilski was adament in not adding judicial renderings that go beyond the explicit wording of Patent Law as written by Congress.
In fact, one of the takeaways from the Pennock case is the deference to Congress in writing the law. To be clear, I am not advocating that a trade secret user could still obtain a patent in the United States after a year of secret commercial use. Clearly, how I understand the new law (that “on sale” includes both public and private “on sale”) is a more faithful following of that decision. For example, if private “on sale” events were not subject to the exclusion of 102(a)(1), then such private “on sale” events would not bar such a secret on sale and allow secret on sale events without regard to time (any exceptions from 102(b) would not apply because the “on sale” bar would not have been tripped in the first place.
When one has made an “on sale” event, the patent defeating aspect of 102(a)(1) is kicked in. It only becomes important as to whether that “on sale” event was public or private in regards to which of the possible exceptions to the patent bar may exist: either 102(b)(1)(A) or 102(b)(1)(B). In other words, having made any offer for sale, the bar of 102(a)(1) is kicked in. As far as I know, there are no explicit impediments to this bar being erected. It is only after the erection of the bar can we then look at 102(b)(1) to see if an exception can be made. Looking for this exception is divorced from instituting the bar, it is a separate step in application of the law.
As has been pointed out, a possible exception may exist in 102(b)(1)(B), but that exception would only apply to a public “on sale” event. From 102(b)(1)(B), private “on sale” events find no succor. If you have a private “on sale” event then, the only possible exception wll come from 102(b)(1)(A). That exception is the rather narrow “derived from” exception, and largely is of very little help to the small inventor.
It should be obvious then that any disclosure under the “on sale” event should be avoided altogether.
I agree that this is the most logical reading, but you’d think that for something this critical Congress would have removed all doubt and actually defined the term as such.
Thank you Ned. That answer makes sense to me.
No. One would still have one year to file an application because United States still retains a grace period with respect to one’s own disclosures.
Max, I think, but I do not know, that your secret cake would not be prior art to any third party, but it would bar the cake maker who invented it and commercially used it from obtaining a patent if he filed more than a year after his commercial use for us began.
The reason I say this is that I do not believe that the basic law regarding “on sale” has been repealed.
There is a substantial school of thought that if the law cannot be interpreted in any other way but that a trade secret user could still obtain a patent in the United States after a year of secret commercial use, then the statute would be unconstitutional on their Pennock v. Dialogue.
Paul, we also have the doctrine in the United States that prior art has to be enabling in order to anticipate, albeit prior art does not have to be enabling to make an invention obvious under some circumstances. I would have preferred that this distinction be encoded into the new statute in some fashion.
For example, 102 (a) could have read something like this:
“the claimed invention was made available to the public in a manner such as to allow the public to make and use the claimed invention.”
And 103:
“Regardless that a public disclosure as provided in 102(a) did not fully enable the public to make and use the claimed invention, it still may be used in combination with other prior art or with the ordinary skill of the relevant art in considering whether the claimed invention would have been obvious to one of ordinary skill in the art at the time the patent application was filed.”
Paul, “public” and “secret” cannot be the same thing. The confusion started in Pennock v. Dialogue where the Supreme Court had a problem in that case with the secret commercial exploitation of the firehose making invention. At that time, “on sale” was not yet part of the statute. So they called the commercial use of the invention prior to the filing of a patent application a “public use” even though, in that case, the art of making the firehose was not available to the public.
After they put “on sale” into the statute, there was no longer a need to call private commercial exploitation of the invention a “public use,” but the courts continued to do so and mistakingly so. It would have been better that the Supreme Court would have cleared up the confusion long ago.
simple, the only point I should've made was that your citation do not support your argument.
Simple, just to make sure we are talking about the same thing, imagine you are prosecuting a patent application in the examiner applies a reference for its disclosure of X. Your provisional application discloses X. Your published paper discloses X. But your claim under consideration is a genus claim that only includes X and which is otherwise not “fully” supported in your provisional application.
Under these circumstances your priority claim to your provisional application fails. However,! your publication does not fail. It is effective to remove the reference because the publication and the reference both disclose the same subject matter, X.
Does this help?
simple, I have just answered your question in another post please look for it.
Simple, just to make sure we are talking about the same thing, imagine you are prosecuting a patent application in the examiner applies a reference for its disclosure of X. Your provisional application discloses X. Your published paper discloses X. But your claim under consideration is a genus claim that only includes X and which is otherwise not “fully” supported in your provisional application.
Under these circumstances your priority claim to your provisional application fails. However,! your publication does not fail. It is effective to remove the reference because the publication and the reference both disclose the same subject matter, X.
Does this help?
Here’s my re-write for 102(b)(1)(B), does it mean the same thing?
“the disclosure is later in time than a disclosure under 102(b)(1)(A)”.
Ned, I wouild prefer an “I don’t know” to this type of snide comment.
Obviously the new 102 has different terms and is a substantive change. Your “Wow!… all prior meaning of well known terms” is condenscending. You asked for a quote and one was given to you. The appropriate response would have been “Thank you!”
“Your lack of basic understanding of the law burdens this conversation.”
Is it a burden to explain how a disclosure provides any additional benefit than a filing?
I am not asking for any type of explanation that you should not be able to give. You should be able to understand what a filing provide, what a disclosure provides and compare the two in total.
I am aware of the priority effect given to a filing, but that does not mean that a filing has no other attributes than the priority effects.
“The benefit of publication Is that it knocks out prior art regardless of whether the claims are fully supported.”
Ned, an application filing does the same thing. Did you read my question through?
link to philly.com
MANCHESTER, Conn. – When Keith Wearne goes grocery shopping, checking out with a cashier is worth the few extra moments, rather than risking that a self-serve machine might go awry and delay him even more.
Most shoppers side with Wearne, studies show. And with that in mind, some grocery store chains nationwide are bagging the do-it-yourself option, once considered the wave of the future, in the name of customer service.
“It’s just more interactive,” Wearne said during a recent shopping trip at Manchester’s Big Y Foods. “You get someone who says hello; you get a person to talk to if there’s a problem.”
PROMOTE THE PROGRESS!
LOL.
Courtenay,
How are you reading that 102(b)(2)(c) only applies to applications? 102(b)(2) states “DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.” I don’t think it only applies to applications.
Yes, that is exactly where we are — a grace period that is too weak to be commercially useful ex ante during R&D, and is just a wild card that will come in to complicate litigation ex post.
What is the CREATE ACT?
i am sorry to interupt the serious discussion over here.
My name is sooraj k abraham and am a law student in india.
since this section postulates a first file policy i have some comments to make please evaluate it and tell me whether its correct or not.
“Some inventions are made with the object of life saving and situations might demand to use the same asap. if the new amendment follows a first file policy wouldn’t it abrrogate the whole object of invention?”
If you think there is a good reason to file a PPA and the NON PPA and for them to be at the sames time, and it is a valid argument, then that is a perfect opportunity for the USPTO to offer an Application that does both.
Suppose the inventor makes cakes, with a process all of his own, that is his secret. He sells his cakes. Within a year, prompted by the commercial success, he files a patent application directed to his new and non-obvious process, setting out a detailed description that enables others to bake cakes just as delicious.
Suppose you simply cannot determine the process by reverse engineering from the cakes on sale.
In Europe, we would say that the patentable process has not been “made available” to any member of “the public” so the process is still patentable. Is it still patentable under the AIA?
Would it still be patentable under the AIA if the patent application were filed later than a year after the first sale, or more than one year on from the commercial success? Can anybody tell me? Does anybody yet know?
I ask because my sense is that Congress recoiled in revulsion from harmonising with the European patent law, lest it enable cake makers to delay patenting their baking processes until after achieving commercial success.
As if they would! Ha!
And if they were to do that, so what?
I sent in a short article on that not-so-simple and debated question to Dennis.
Obviously.
But when you talk about publications and on sale, I assumed you were talking about current law.
Sent from iPhone
“Second, your summary of current law is not correct.”
I was not talking about pre-AIA law Ned. Maybe that is why you are so confused.
B requires a public disclosure.
A does not.
A could apply to "on sale" even though private.
B could not.
Sent from iPhone
Ned – you yourself have been talking about more than just 102(b)(1)(B) – see below at 11:01 AM.
You are playing that “indignation” game again. Please grow up.
Wow!
Just to think that all prior meaning of well known terms was swept away by those few words.
Sent from iPhone
Huh? You are now talking nonsense. Unless we change the law, applications are not published on the same day they are filed. A publication on the same date of filing IS what we are talking about.
Sent from iPhone
“about removing a reference throughout this thread, we were talking only about B.”
Don’t see that in this thread. There are several discussion on this thread that discuss more than just (B) – so lose the attitude. It’s not very professional.
102(b)(1)(A) is an applicable exception which proves the point that “on sale” is not a personal bar. Whatever you think 102(b)(1)(B) says, the fact that 102(b)(1)(A) provides for a non-personal bar for “on sale” makes the topic germane – and your little temper tantrum inappropriate. Let’s stay adults here, shall we?
Do you really think that 102(b)(1)(B) overrides the fact that 102(b)(1)(A) provides that “on sale” includes both private and public on sale events?
Page 1: “To amend title 35, United States Code, to provide for patent reform.”
This is not a new concept.
“I didn’t say the application was a publication.”
Did I say that you said an application was a publication?
No.
Is an application a publication?
Yes, it can be – quite easily. Do you understand the ramifications of this?
“Once species A is published, the later application by another disclosing species A is removed as a reference.”
No one is arguing otherwise. The point that you keep missing is that the application can serve as a publication. Indeed, you have not said this – but you need to say it. Once you say it, it might sink into your thoughtst that the truth of the statement makes your tactic of file and publish separately inthe same day quite meaningless. There is no need for anyone to understand what you said, there is a need for you to undersand why what you said is bogus.
Once you file, there is no need for publishing on a secondary basis.
This is not a difficult concept.
Quote please!
Sent from iPhone
Dumkopf. Please do not change the topic, erect strawmen, move goalposts and the like.
When we are talking about removing a reference throughout this thread, we were talking only about B.
Sent from iPhone
Anon, let's not be cute. We all know that the grace period applies only to activity within a year.
The question with "on sale" is whether a private use within the year is excused. I think it is.
The reason it is is because the term "disclosure" in 102(b) references 102 (a). Therefore I think everything in 102 (a) is included within the meaning of the term "disclosure."
Sent from iPhone
Testy testy! I’m not complaining about hypos, just ridiculous hypos. Chill pill, take one.
The subject matter of the reference not in the publication is not removed.
I hope you understand the implications of this.
I think we largely agree on the result.
Sent from iPhone
The major problem with you analysis is your assumption that the recitation of well known terms on 102 was intended to change or could change their meaning or interpretation in any way.
Second, your summary of current law is not correct.
Sent from iPhone
Yes!!!!!!!!
Sent from iPhone
READ the statute.
Sent from iPhone
“Um, who cares? What is up with you patentbaggers”
What is a patentbagger?
Do you realize that this is a patent website?
If you do not want to see hypos on patent law, you do not have to come to this website. If you do not want to add to the discussion, then please keep your comments to yourself. “gotta screech” indeed.
No one is forcing you to be here. You are welcome to leave anytime the discussion is on patent matters that do not fit your fancy.
“There is no indication of any change”
Ned, this too is incorrect. Directly on page one of HR 1249 the indication is there that these are changes to the current law. Your statement is without backing.
“but that is require to remove a reference.‘
Also not correct Ned.
The exception in 102(b)(1)(A) to remove a reference does not call out that the disclosure must be a public one.
102(b)(1)(A): DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
The word “public” is nowhere to be found.
Ned,
That would be incorrect.
102(b)(1)(A) does provide an exception – but it is the exception that proves the rule.
The 102(b)(1)(A) exception as applied to the “on sale” (both public and private) bar event of 102(a)(1) is a limited exception. LImits of the exception include a one year or less time frame, and the (A) section indicates a derivation requirement.
Nowhere in the exception of (A) is there anything that overrides the plain “on sale” bar, nor indicates that all private sales are captured in the exception. For example, a private sale made one year and one day prior to the effective filing date would fail to engage the exception, and even such a private event is a bar against the would be patentee. Further, this type of bare event applies to everyone wanting a patent.
I do not see this as “close” at all. The words, or rather the lack of words in 102(a)(1) do not paint an ambiguous picture of the “on sale” bar.
Q: How does one view the bars of 102(a) to be personal or not?
A: “personal” is a misnomer. 102 does not distinguish between public and personal, but rather, 102 distinguishes between public and private. “Private” is not the same thing as “personal.” The writing of 102 dictates which bars have a public component (patent, public use and otherwise available to the public) and which can extend into the private realm (printed publication, on sale). Regardless of public or private, none of the bars are personal bars – each applies to all.
I like the way that 102(a) starts out: “a person shall be entitled to a patent” This may drive some people nuts, as it supports an entitlement philosophy (pro-patent).
The rest of 102(a) gives two sets of conditions that bar a person from obtaining their entitlement (this is not “personal” as the requirements are universal – applying to ALL persons). If a claimed invention has already been patented, then everyone is barred from obtaining a patent. Each of the bars in 102(a) act in the same way – barring obtainment for anyone to get a patent for each condition. These are all bars against anyone obtaining a patent when each condition exists. In this sense, it really is a misnomer to think that there are “personal bars”
Some conditions explicit set the bar at a public disclosure – for example, use must be a public use. Private use is not barred. One can have a private use and that private use would not remove entitlement to a patent.
Likewise “otherwise available to the public” requires a disclosure in that category to be a public disclosure.
While both of these prescriptions explicitly call out “public” – the bars in 102(a) are not all public bars. Some of the elements called out as bars do not explicitly limit the bar to a public event.
The prescription uses “public” in other barring events, but does not use it in the “on sale” event, so the “on sale” bar to entitlement in 102(a) is for both public and private “on sale” events. I do not understand what is meant when the phrase “public disclosure” is used in connection to the “on sale” bar, because the prescription against entitlement to a patent applies to all on sale events, both public “on sale” events and to private “on sale” events. Whether an “on sale” event is “personal” or not is a meaningless distinction. Likewise, one can have a private printed publication and that private printed publication would remove entitlement to a patent just as would a public printed publication. 102(a) is not ambiguous as to which bars call for public disclosure and which do not.
Is it a good idea to have such private matters be bars? Probably not, as their very nature make it difficult for Examiners to be aware of them. Will the non-disclosure of such private items rise to the level of inequitable conduct? Possibly. From a policy standpoint, such private bars are exactly the type of thing that the Office needs to have applicants be forthright about.
Um, who cares? What is up with you patentbaggers and your ridiculous hypos for everything?
OMG! The international date line!!!
OMG! What about patents on jump gates! Babylon 5!
OMG! What about the small inventors that can’t afford the $15 provisional filing fee increase!
Patentbaggers gotta screech, I guess.
“But, under your hypo, both are SF because both are the same.”
OK, now change the scenario a bit (as disscussed in this thread = the second disclosure is an actual invention with true enablement. It is only the subject matter of the second that is the same as the first. Now the later is not just SF, but does a science fiction publication still remove later prior art disclosing the same subject matter regardless of what is being claimed?
The point (if it is too difficult to discern), is that mere disclosure of the same subject matter acts to the opposite of promoting the arts. Anyone can dream and disclose dreams – those dreams (same subject matter) should not stand in the way of actual inventions on that same subject matter.
Offers for sale can be either public and private.
It is the current law. There is no indication of any change.
Sent from iPhone
Yes.
But, under your hypo, both are SF because both are the same.
Sent from iPhone
While this is a close question, I think private on sale is excluded by 102(b)(1)(A).
Sent from iPhone
“The publication removes later prior art disclosing the same subject matter regardless of what is being claimed. Priority is not involved.”
So a science fiction publication removes later prior art disclosing the same subject matter regardless of what is being claimed?