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Defending the USPTO Interpretation of the New Grace Period


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: September 9, 2012 @ 9:00 am
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Director Kappos delivering remarks during the FTF Roundtable, Sept. 6, 2012.

On September 6, 2012, the United States Patent and Trademark Office held a Roundtable on the campus of the USPTO in Alexandria, Virginia.  The Roundtable event was for the purpose of the USPTO accepting feedback from the user community on the proposed examination guidelines to implement the first-to-file changes of the America Invents Act (AIA), which go into effect on March 16, 2013.

While there were many issues raised, the one issue on which there seemed overwhelming consensus (although not unanimity) was with respect to the USPTO’s interpretation of the new grace period.  A substantial majority of those who offered comments disagreed with the USPTO’s interpretation of 102(b)(1)(B), which pertains to disclosures made by third parties. The USPTO’s interpretation of this provision was set forth in the Federal Register on Thursday, July 26, 2012.

After the pre-scheduled speakers concluded their remarks at the roundtable those in attendance were invited to make remarks.  At that time I was recognized and went to the podium to speak on behalf of the USPTO interpretation of the grace period. After my remarks there were no other remarks, but a Q&A session began, with many of those who spoke asking questions of the USPTO Officials in attendance, who were surprisingly willing to provide insight into their interpretations.  I say surprisingly because these events are typically not a forum where the USPTO shares information.

The questions asked of the USPTO, and specifically Director Kappos, related to the USPTO interpretation of the grace period in 102(b)(1)(B).  At one point, in response to a question, Director Kappos responded: “We are reading the words just the way that Gene Quinn suggested in his comment.”

I do not claim that everything below is in 100% alignment with the USPTO interpretation, but I write now to present and expand upon my brief remarks.  I will be submitting this article to the USPTO for consideration.  Written comments are due to the USPTO on or before October 5, 2012, and should be sent by e-mail to: fitf_guidance@uspto.gov.

First to File and the U.S. Grace Period

The biggest change to US patent laws, and certainly the most discussed, is the fact that the United States has (effective March 16, 2013) converted from a first to invent system to a first to file system. Saying that we will have a first to file system, however, is a little misleading given that the term “first to file” has certain international meanings that will not apply.

A traditional first to file system is one that demands absolute novelty in order to obtain a patent. A traditional first to file system means that if there is a prior use or publication of information relating to the invention no patent can be obtained. That, however, is not what the US first to file system mandates. Under the US first to file system the inventor will still have a personal grace-period, which still makes the United States different than many (if not most) jurisdictions around the world.

The new U.S. grace period, which is quite different from the grace period now in effect up to and including March 15, 2013, is found in 35 U.S.C. 102(b)(1).  The text of the statute is as follows:

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.

(emphasis added).

USPTO Interpretation of the Grace Period

In relevant part, the USPTO interpretation of the grace period as set forth in the Federal Register is set forth below:

The AIA in 35 U.S.C. 102(b)(1)(B) provides additional exceptions to the prior art provisions of 35 U.S.C. 102(a)(1). These exceptions disqualify a disclosure that occurs after a public disclosure by the inventor, joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. The provisions of 35 U.S.C. 102(b)(1)(B) indicate that a disclosure which would otherwise qualify as prior art under 35 U.S.C. 102(a)(1) is not prior art if the disclosure was made: (1) One year or less before the effective filing date of the claimed invention; and (2) after a public disclosure of the subject matter of the disclosure which would otherwise qualify as prior art under 35 U.S.C. 102(a)(1) by the inventor or a joint inventor or another who obtained the subject matter directly or indirectly from the inventor or a joint inventor.

The exception in 35 U.S.C. 102(b)(1)(B) applies if the ‘‘‘subject matter’ disclosed [in the prior art disclosure] had, before such [prior art] disclosure, been publicly disclosed by the inventor or a joint inventor * * *.’’ Thus, the exception in 35 U.S.C. 102(b)(1)(B) requires that the subject matter in the prior disclosure being relied upon under 35 U.S.C. 102(a) be the same ‘‘subject matter’’ as the subject matter publicly disclosed by the inventor before such prior art disclosure for the exception in 35 U.S.C. 102(b)(1)(B) to apply. Even if the only differences between the subject matter in the prior art disclosure that is relied upon under 35 U.S.C. 102(a) and the subject matter publicly disclosed by the inventor before such prior art disclosure are mere insubstantial changes, or only trivial or obvious variations, the exception under 35 U.S.C. 102(b)(1)(B) does not apply.

Janet Gongola, USPTO Patent Reform Coordinator, Sept. 6, 2012.

Interpretation in Opposition to the USPTO

There is a belief by many in the patent community, which was expressed at the Roundtable, that if an inventor publishes then subsequent publications cannot be used against the inventor to defeat patentability.  I do not share that viewpoint and never have.  On IPWatchdog.com we have had numerous and heated debates on the issue.

Some who believe the new 102(b) grace period inoculates an inventor who has disclosed from subsequent disclosures prior to filing say that they come by this interpretation based on the language of the statute.  Frankly, I do not know how those who support this reading can come to this understanding based on the text of the statute.  The statute does not seem to allow for such an interpretation.  Others, however, come to this interpretation not based on the language of the statute, but rather based on the Legislative History.

In the Legislative History Senator Kyl (R-AZ) says: “Under new section 102(b)(1)(B), once the U.S. inventor discloses his invention, no subsequent prior art can defeat the invention. The U.S. inventor does not need to prove that the third party disclosures following his own disclosures are derived from him.”

But 102(b)(1)(B) says: “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 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.”

Said in the opposite manner, 102(b)(1)(B) translates to: “A disclosure made 1 year or less before the effective filing date of a claimed invention IS prior art to the claimed invention under subsection (a)(1) unless the subject matter dislcosed 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.”

I just don’t see any way that what Senator Kyl says can be interpreted as being consistent with the language in the bill.  In fact, subsequently disclosed prior art seems to specifically be envisioned in the plain meaning of the law to defeat an invention unless it was obtained prior to the inventor’s publication from the inventor.  So if the inventor publishes and party A were working on something independently they could publish immediately and defeat the inventor’s ability to obtain a patent unless party A obtained the information from the inventor prior to the inventor’s publication.

The Error of Relying on Legislative History

Those who urge the USPTO to consider this Legislative History when interpreting the new grace period are making an enormous mistake and the USPTO should not succumb to pressure to adopt the interpretation of the Legislative History for at least three reasons.  First, Legislative History is inherently unreliable and regardless of what one thinks of the patent jurisprudence of the Supreme Court it is abundantly clear that a substantial majority of the Supreme Court has utter disdain for relying on Legislative History.  Second, the Legislative History here directly contradicts the language of the statute, which means that under the canons of statutory construction the Legislative History cannot be relied upon.  Third, as much as I like Senator Kyl he is but one of 535 Members of Congress.  His opinions and interpretation are his own and do not necessarily reflect the views of a majority of Members of the Congress.

Furthermore, it would be rather perverse if the statute could be read to inoculate a first disclosure against subsequent disclosures for at least two reasons.  First, such a reading would most certainly not create a first to file system, but rather would create a first to publish system.  Second, so much of the rationale for converting to a first to file system — even a U.S. version of a first to file system that allows for at least some grace period — was continually reported as being an important step toward harmonizing U.S. patent laws with the patent laws of the remainder of the global community.  If the America Invents Act were to create a first to publish system that would take us at least one step further away from patent harmonization, not closer.  In many (if not most) jurisdictions around the world any disclosure prior to filing would defeat novelty.  Under a reading of 102(b) as adopting a first to publish rule there would be tremendous incentive to publish first prior to filing, which is the antithesis of the novelty regimes in so many countries around the world.

The Proper Interpretation of the Grace Period

It may have been quite wise, and more in keeping with U.S. tradition, to have adopted a first to publish system. That debate was not held, and the language of the statute prevents such an interpretation.

When you initially look at this grace period language it becomes clear that there is an effort to morph what in (a)(1) is a traditional first to file approach and turn it into a first inventor to file system.  102(b) seeks to eliminate from the universe of prior art disclosures made by the inventor or which owe their substance to the inventor.  So if the inventor discloses his or her invention less than a year before filing  a patent application the patent can still be awarded.  If someone learns of the invention from the inventor and discloses less than a year before filing a patent application, the patent can likewise still be awarded.  Notably missing is an exception that applies to independent third-party activities within 1 year of filing.  Thus, the grace period set up by the new 102(b) excepts disclosures made by or through an inventor less than 1 year before the inventor files, but does not extend to independent disclosures made by others less than 1 year before the inventor files.

This reading is build upon the language of the statute itself.  The term “the subject matter disclosed” is used exactly in both 102(b)(1)(A) and 102(b)(2)(B).  The use of the exact same phrase repeatedly must necessarily mean that the term is intended to cover the identical thing.

In 102(b)(1)(A) the statute says that “the subject matter disclosed” by the inventor cannot be used against the inventor.  In 102(b)(1)(A) the statute says that “the subject matter disclosed” by the inventor cannot be used against the inventor if disclosed by a third party who obtained “the subject matter disclosed” from the inventor, either directly or indirectly.  Therefore, it is eminently reasonable for the USPTO to say that for subsequent disclosures after a disclosure of the inventor to be excluded as prior art they must be the same as the disclosure of the inventor with even trivial differences enough to prevent application of the exclusion.

Under this interpretation it would be impossible for an inventor who independently arrived at the invention to subsequently publish “the subject matter disclosed.”  It would stretch the imagination that one who truly arrived at the invention independently could disclose the invention with sufficient identity to exclude the subsequent disclosure as prior art under 102(b)(1)(B).  Furthermore, it would seem inconsistent with the express language of 102(b)(1)(B) to exclude the subsequent disclosure of an independently arrived at invention even if the subsequent disclosure was exactly identical to that disclosure of the inventor.  This is because the exclusion from prior art authorized by the express language of 102(b)(1)(B) applies only when the subsequent disclosure “obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.”  Thus, the independently arrived at and subsequently disclosed invention would be prior art against the inventor who disclosed first but did not file a patent application prior to said subsequent disclosure.

Conclusion

It is important to understand that under the new law an inventor is always better off filing sooner rather than later. File early and often. Nevertheless, there is not a true race to the Patent Office set up by the new law. In order to be awarded a patent one must still be an inventor. Those who learn of an invention cannot now, nor can then under the new law, beat the inventor to the Patent Office and obtain a patent. Inventors must contribute conception and stealing from another provides no conception that will support the awarding of a patent.

This personal grace-period says that the inventor’s own disclosures, or the disclosures of others who have derived from the inventor, are not used as prior art as long as they occurred within 12 months of the filing date of a patent application relating to the invention. However, and this is a very big however, disclosures of third-parties who independently arrived at the invention information will be used against the inventor. Said another way, there is no grace-period relative to third party, independently created disclosures. This is an enormous difference between the old law and the new law.

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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patent Reform, Patents, USPTO

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

48 comments
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  1. Gene -

    “So if the inventor publishes and party A were working on something independently they could publish immediately and defeat the inventor’s ability to obtain a patent unless party A obtained the information from the inventor prior to the inventor’s publication.”

    Either I’m misunderstanding you, or you are misunderstanding the statute. Kyl’s legislative history statement (in this case) is perfectly matched with the language. Inventor (or someone who derives from inventor) publishes. Then Party A publishes. The language is 100% clear that the derivation is to the inventor for the ORIGINAL grace period lock – NOT the followups. Thus, Party A is is not prior art even without derivation.

    There is no mention whatsoever of Party A having to derive – not in the statute, not anywhere. I don’t know where you are getting that, but not from the language of the statute. The statute is written so as to protect the inventor’s grace period in case the inventor does not do the initial publication – the protection still happens if the publication is derived.

    Sorry, you are way out on a limb on this one. Way, way out.

    As for identicality of subject matter – I’ll have to give it more thought. The problem with that view is that 103 relies on 102, but maybe this is a good reading. Of course, what is subject matter anyway? Claim? Disclosure?

  2. Michael-

    We will have to agree to disagree. My reading is consistent with the USPTO reading. The statute by its on very clear language is not consistent with Senator Kyl’s very clear statement in the legislative history.

    What you miss is the fact that in (B) it requires “the subject matter disclosed,” which is that same “the subject matter disclosed” in (A). That ties (A) and (B) together. Otherwise we do not have a first to file system. We have a first to publish system and have moved further away from the international community, not closer to the international community.

    -Gene

  3. Yeah, I know it’s a first to publish system, but that was added later when people choked on the lack of a grace period. It may bring us farther away from the international community, but that’s part of the ridiculousness of the AIA, and not a reason to misread the statute.

    I don’t see anywhere in the USPTO interpretation above that the second discloser must have derived it from the patentee, and that later “independent” publications of the same information are suddenly prior art despite the plain language of the statute. Can you point me to that interpretive language?

    If the argument is based on the “subject matter” being the same – that means the inventive disclosures must match the same claim elements – not that the disclosure must be identical. Is it really your position that the grace period only applies to later disclosures where the actual text is word for word identical to the prior disclosure? I cannot believe that’s what the statute meant, or that that’s what the PTO meant.

    I guess I’m just scratching my head here.

  4. The USPTO interpretation does mention that the subsequent disclosure is not prior art if derived. They also say that the subsequent disclosure is only exempted from being prior art if it is exactly identical to the first disclosure. They don’t use the terms “exactly identical” but they say that is the subsequent disclosure has even trivial differences then it can and will be used against the inventor who disclosed first.

    So how can a subsequent disclosure be exactly identical? It would have to be the same disclosure as previously made.

  5. Gene –

    “In order to be awarded a patent one must still be an inventor.”

    This relies entirely on the honesty of the applicant. Any talk of the Patent Office figuring out some method of determining whether or not the applicant actually invented the thing is just PR, or a real boondoggle if they actually try it. The proponents of this bill can shout “First ‘INVENTOR’ to File” till the cows come home, but it will effectively be First-to-File, and the independent inventor will have to be more secretive than he has ever had to be in the history of this nation – a history of great innovation under a former patent system that supported it.

    Randy

  6. They don’t use the terms “exactly identical” but they say that is the subsequent disclosure has even trivial differences then it can and will be used against the inventor who disclosed first.

    Can you (or the USPTO) give an example where a subsequent disclosure does not have even trivial differences in subject matter with an original disclosure and yet is not identical to said original disclosure?

  7. somebody get me a green card i am moving to the US!

  8. Gene:
    1. Like I said, show me the language in the PTO interpretation that specifically says if it is not derived from the inventor, it must be allowed as prior art, even if after.
    2. “So how can a subsequent disclosure be exactly identical? It would have to be the same disclosure as previously made.” – I don’t think so. It’s a disclosure of identical subject matter. Not an identical disclosure. To quote the PTO language above: “Thus, the exception in 35 U.S.C. 102(b)(1)(B) requires that the subject matter in the prior disclosure being relied upon under 35 U.S.C. 102(a) be the same ‘‘subject matter’’ as the subject matter publicly disclosed by the inventor before such prior art disclosure” – it says NOTHING about the words used, the form of the disclosure, etc.
    3. Which leads to Mark’s question, which is a good one. I would think that ANY anticipating reference would follow this. For example:
    Time A: Patentee publishes a paper showing how Elements A,B,C combine to form magic dust
    Time B: 6 months later Prior Artist sells Magic Dust comprising A,B,C which is easily reverse engineerable
    Time C: 12 months after A(-1), Patent files on Elements A,B.C to form magic dust

    Gene’s argument. Prior Artist is prior art for 2 reasons. First, it is not “identical” to the disclosure of Patentee. After all, it is “on sale” rather than a published paper. Second, it is not derived from the Patentee, and therefore cannot be excluded from the prior art.

    I think both of these have to be wrong on the plain language of the statute (and the PTO’s interpretation of same). First, the subject matter of Prior Artist is identical – it is magic dust made of A,B,C. Now, if the patent claimed A,B,C,D, or if Prior Artist put A,B in the pixie dust, that’s another story (and a complicated one – how can Prior artist render A,B,C obvious by A,B when Patentee has already published A,B,C? But we’ll leave that for another time. This is a clear example of identical subject matter coming from non-identical disclosures.

    Second, the statute makes clear that the exclusion from prior art is for anyone publishing after Time A, so long as Time A is an inventor, co-inventor, or deriver. The plain language is that clear. I’m still unclear how we get to the argument that Prior Artist must be a deriver to be excluded from prior art from the text of this section.

  9. Gene,
    I disagree that (A) and (B) are tied together. They are separate and unrelated clauses. “Or” is used between the clauses. (B) does no define the “subject matter disclosed” as the twrm is used in (A) but identifies other non-prior art subject matter. It is confusing though, and I think that “had before” should not be a subordinate clause (ie the first comma should be removed).
    Aaron

  10. I see above an invocation of the word “same” when talking about “subject matter”. This reminds me of the wording of the Paris Cobnvention which establishes a right of priority for subject matter which is the “same” as that of the earlier filing, the subject of the declaration of priority.

    There is by now 30 years of evolving EPO jurisprudence on what is meant by “same invention”. I wonder how useful to the law makers of the USA might be the ebb and flow of argument there has been, these past 30 years, on when a priority can be recognised, and when not. The several relevant decisions of the Enlarged Board of Appeal of the EPO (Europe’s SCOTUS on this issue) would sum it up.

    I hope there will be more comments on this thread, for I am among those who had supposed that the language of the AIA admitted of no sensible reading other than as a “First to Publish” regime. I had supposed it to be an elegant and deliberate balance between the opposing mischiefs of First to Invent and absolute (EPC) novelty, of particular appeal to blue sky inventor academics. Next step: convince the rest of the world to adopt AIA style First to Publish, and American academics can then re-assume their rightful places as Masters of the Universe. Just a matter of time.

    BTW Gene, how do you come to the idea that First to File and a grace period exist in the world nowhere in the same patent statute? I had thought that to be the case everywhere except in the EPC.

  11. This is a clear example of identical subject matter coming from non-identical disclosures.

    Michael,

    I like your example. I think an examiner implementing the USPTO guidelines would have no problem showing that there is at least a trivial difference between the subject matter disclosed by the manufactured magic dust and the subject matter disclosed by the paper. All manufactured materials contain at least trace impurities. The paper makes no mention of impurities. “Acceptable levels of impurities” is an example of a subject matter disclosure. Hence all of the subject matter disclosed by the manufactured material is available as prior art.

  12. Max,

    Can you give an example of where First to File and grace period exist elsewhere?

    Mark

  13. Mark, maybe that’s true, but if it is, then the Grace Period is meaningless. This is why I think the reading discussed here will never fly.

    If Publication A never happened, there is no question but that Prior Artist would anticipate the patent – impurities and all. Not render obvious, but anticipate. And if that’s true, then it has to be the same subject matter or the whole interpretation makes no sense. But we’ll see. I’ve been wrong before, and I’ll surely be wrong again. But not on this, I think.

  14. I have to agree with Michael Risch on this one. Even if you tie the words “the subject matter disclosed” from (A) and (B) together, it would be improper to assume or inject into the statutory language of (B) that the disclosure must be identical to that made by the person making the disclosure in (A).

    My reading is that to the extent there is additional information disclosed by the Prior Artist that is material to the claimed invention, but that was not part of the inventor’s prior “subject matter disclosed,” the additional information would be prior art held against the claimed invention, but not the balance of the subsequent “subject matter disclosed.”

  15. FtF with GP? Certainly Mark. In Europe, let’s start with the EU Design Patent and follow with the German national 10 year utility patent they call the Gebrauchsmuster. Then there’s the standard utility patent statute in Japan (and, I suspect) Korea and China. If I’m not mistaken, Australia is in there too. How about Canada?

    But of course it depends what you mean by “grace period”. If you take an expansive definition, well, even Article 55 of the EPC creates one. Have a look at it; you might even wonder how much of a role it played in framing 102 of the AIA.

    http://www.epo.org/law-practice/legal-texts/html/epc/2010/e/ar55.html

  16. Michael,
    I’m going to take back what I said above. I was rereading the Federal Register quote and realized an important point.

    Even if the only differences between the subject matter in the prior art disclosure that is relied upon under 35 U.S.C. 102(a) and the subject matter publicly disclosed by the inventor before such prior art disclosure are mere insubstantial changes, or only trivial or obvious variations, the exception under 35 U.S.C. 102(b)(1)(B) does not apply. (emphasis added)

    If an examiner was relying on the disclosure of A, B and C in the manufactured material as prior art disclosure under 35 U.S.C. 102(a) and if the paper was an earlier disclosure A, B and C, then I don’t see how an examiner could say there was even a trivial distinction between the subject matter he/she was relying on and the public disclosure.

    So to make it more concrete, let’s say that I am the first one to publish “An alloy of iron, chromium and nickel has excellent corrosion resistance”. Someone else independently starts selling alloys of iron, chromium and nickel. I then file a patent application within a year of my public disclosure and claim “an alloy comprising iron, chromium and nickel”. I believe that I could disqualify the manufactured alloy as prior art under 102(b)(2)(B) according to the USPTO guidelines.

    Anyone disagree?

  17. Max,
    Fascinating. I wasn’t aware of Article 55 of the EPC. Am I correct that an “international exhibition falling within the terms of the Convention on international exhibitions” is a fairly narrow definition? That only conventions listed on http://www.bie-paris.org/site/, for example, qualify?

    Am I also correct that if a party violates a nondisclosure agreement with an applicant, that that would qualify as “an evident abuse in relation to the applicant or his legal predecessor”? So, for example, let’s say that an employee has a nondisclosure agreement with his/her employer. Said employee makes an invention and then publishes that invention in violation of the said nondisclosure agreement. The employer could still get a patent by filing an application within 6 months of the publication. Correct?

  18. I brought up this subject about what 102(b)(1)(B) means last October on this blog. If 102(b)(1)(B) does not mean that publication by the inventor(s) locks out subsequent intervening prior art by 3rd parties, then 102(b)(1)(B) appears to me to be either redundant or superfluous to what 102(a)(1)(A) says. I also share Michael R.’s issue about the “same subject” matter meaning identical disclosure.

    What is really disconcerting is that how 102(b)(1)(B) is interpreted by the courts (not simply the USPTO) may impact greatly the strategy you might consider pursuing under the AIA. If 102(b)(1)(B) means that publication locks out subsequent intervening prior art by 3rd parties, publication could be viewed as an “insurance” policy. But from my dialogue with Blind Dogma last October about such a “publication” strategy, that also necessitates 102(b)(1)(B) be interpreted such that publication does lock out subsequent intervening prior art by 3rd parties, and that’s not a given at this point, and likely won’t determined for many years hence. In other words, we are currently in a “Twilight Zone” until the courts speak clearly on what 102(b)(1)(B) means. So for the moment, the safest course to me is to file early and not rely on 102(b)(1)(B) yet to provide a “publication” “safe harbor.”

  19. P.S. to Max,

    Does filing a US provisional, followed by a PCT, followed by an EU application qualify under article 55 as to the date of the US provisional? or do you have to file directly with the EU within the 6 month window?

  20. Aaron-

    They are separate clauses that use the exact same terminology. If canons of statutory construction mean anything then “the subject matter disclosed” has to mean the same thing in (A) as it does in (B). This is hardly a radical concept. It is statutory interpretation 101. It is how the USPTO is interpreting the statute and I predict their interpretation will not change. I also predict that it will be how the Federal Circuit interprets the statute as well. Of course, you and others are free to disagree, but you will do so at the peril of your clients I’m afraid.

    -Gene

  21. Of course they mean the same thing. They just don’t mean what you say they mean. And I don’t think the PTO is saying it means what you are saying it means. In (A), it’s the same point – was the “subject matter” taken – not “the exact words of the disclosure,” but the “subject matter.” The subject matter could be in another format but cover the same information.

  22. Gene,

    Are you saying the manufactured magic dust in Michael’s example would be available as prior art under the USPTO’s proposed guidelines?

  23. Gene, correct me if I’m wrong, but doesn’t your interpretation effectively construe part B in such a way as to entirely read it out of the statute? If not, then what, in your view, does part B add?

  24. Am I allowed to say “I told you so?”

  25. At the very least the USPTO interpretation protects the inventor from having to prove derivation of an unauthorized disclosure by a third party who either maliciously or innocently republishes it without giving attribution to the inventor. We will have to wait and see whether the USPTO provides any further latitutde than that in how they interpret whether the subject matter is the “same” or rises to the level of being “different” in albeit trivial ways. I think in many cases the subject matter could be considered to be the “same” without being word-for-word identical.

  26. [...] on the proposed first inventor to file rules are due no later than October 5, 2012.  For more see Defending the USPTO Interpretation of the New Grace Period and USPTO Publishes Proposed Examination Guidelines for First to File. Thus, the examination [...]

  27. So, answers to Mark N.

    1. Yes, the definition of International Exhibition is very narrow. I know of no jurisprudence yet.

    2. Yes, that looks to me like an “evident abuse”

    3. Yes, you have to file in respect of the EPO within 6 months. PCT would do, but a US pro not. Yours was a good question because it was open for a long time before EPO jurisprudence settled it.

    Mark, it’s kind of weird, to see the USA treading a path that the nations of Europe trod, back in the 1960′s, when they were working out from scratch a common pan-European First to File law. It had to be acceptable to all signatory nations, including the UK and Germany. That took a lot of arguing, and only the simplest, cleanest provisions got through the discussions, to be enacted in the EPC. Over the last 30 years, the rest of the world has adopted these provisions of the substantive law of patentability and validity. The USA however hasn’t, for reasons we all understand.

  28. Michael, per your comment at 13 (makes no sense), you have fallen to a false logical argument.

    As David Boundy suggests, there were several things that made no sense, but proceeded anyway. You cannot claim now that such makes no sense and cannot mean what it plainly does. Warnings were given.

    I for one took David’s advise and had multiple conversations with my elected representatives, explainly exactly what is now unfolding. I was politely listened to, thanked for my input, and ignored.

    EG,

    Do you have links to our past conversations? I think it may very well be beneficial to this thread to review those past discussions.

  29. “Do you have links to our past conversations?”

    BD,

    As requested, the posting of my October 5, 2011 article: http://www.ipwatchdog.com/2011/10/05/some-more-heretical-thoughts-on-strategies-for-coping-with-first-to-file-under-the-america-invents-act/id=19598/ . And please don’t “kill the messenger”!

  30. Am I allowed to say “I told you so?”

    David,

    You have my permission for what it’s worth.

  31. Still waiting for that PTO interpretation that in any way confirms Gene’s reading. I’m just not seeing it – even if you don’t like the logic of my point 13, the plain text of the statute just doesn’t support the reading Gene is giving to it. Is there another credible source that reads the AIA this way? Is it possible that every patent practitioner and professor that I know (including those that helped draft this thing) are just wrong? I guess it’s possible, but that sure will be a surprise.

    Every patent act has nutty stuff that the court’s figure out rationally. For example, how do we explain 102(b) art being applied to 103? Technically it’s wrong, but doing so is probably the right outcome. I see that happening here, and I think that most people do not see Gene’s view as the right outcome, even if the language were ambiguous.

    Blind Dogma- you are right that the conservative approach is to file first rather than to rely on publication. But that’s true under any reading. That’s true even in today’s first to invent world.

  32. Michael,

    See the linked thread for something else that is also true (i.e. risk).

    As for anyone else (besides a handful of people here, and oh, the government, you mean? As far as academics, even (especially) those that may have helped draft this schlop,…. well, I’ve said my piece on how I feel about academics before, and even though you are one of my favorites, the ability to self-induce academic myopia is quite there (sorry, it’s an offshoot of the grain alcohol in the Kool-Aid,… oops, sorry Stan, that was supposed to be a trade secret wasn’t it).

    EG,

    I would give you credit (besides David) for beign someone who tried to warn about the dangers of the AIA. I understand that your modesty prevents you from taking that credit, but you should take it.

  33. Well, there is risk, but I think it is hand wringing risk more than anything. But, I agree about conservatism.

    As for the rest, I really don’t have a fish to fry. I have no position whatsoever other than reading the face of the statute, knowledge of patent law, and rationality. So I ask you, as I have asked Gene, to please point me to the government statements anywhere that supports this theory of how to read these new sections. I want to see some document posted by some government agency somewhere that says:
    1. The “text”/”form” of followup disclosure must be the same (rather than just the substance) AND/OR
    2. That the followup disclosure must have been derived from the inventor

    I’ll happily eat crow and tell the masses how we have it all wrong, but I need some evidence. The argument presented here (other than risk aversion) is just not persuasive given the plain words of the statute.

  34. Michael,

    Show me a statement or document by an official agency that suppoprts your version.

    Touché

    As for statement, did you miss the statement in Gene’s article in which Director Dave Kappos says “Gene’s got it right.” ?

  35. My advice to clients on this matter is DO NOT DISCLOSE until a complete patent application has been filed (filing a watered-down provisional will create its own problems). Then one need not worry about this issue. Any other advice could subject an attorney to potential malpractice claims down the road, because it’s anyone’s guess as to how the statute will ultimately be interpreted by the CAFC.

  36. To file before otherwise disclosing has always been and remains the best advice. The grace period was and still is merely a fallback provision, not advisable to be deliberately relied upon. But what do you tell a new client who comes to you after having already made a disclosure, especially if that disclosure has been propagated by a third party without the client’s authorization and without attribution? If you follow Gene’s interpretation, you tell them that they are out of luck and not to bother filing because the third party disclosure is prior art and even if they think it was copied that would entail a very expensive burden of proof. Is that really the best advice to give the client?

  37. Well, I’m not the one claiming that the government is backing my view. As for the Kappos comment, I don’t have Gene’s comment handy, I don’t have the Kappos comment verified, and I don’t know that it is true that the PTO is doing it.

    For those of you who are arguing caution, you had better get your applications written fast, because if your advice turns out to be wrong and your client could have put a stake in the ground with a publication but you counseled a delay — and someone else publishes first — you are going to have some very unhappy clients on your hands. The “just keep it quiet until you file” isn’t going to play as well as it did in a first to invent system.

    As for statements of official agencies:
    1. Legislative history: yes, congress is an official agency and congressional reports matter
    2. See page 16 here, which implies my point of view: http://www.uspto.gov/aia_implementation/120906-fittf-roundtable.pdf There is no statement that Taylor had to derive from Smith. There is no statement that the disclosure by Taylor had to be the same text/form as Smith.
    3. “subject matter” is used throughout the AIA and the PTO guidelines and rules, and in every case it means the content of the disclosure (or patent) and not the form of it.
    4. See the Federal Register examiner guidelines on this: http://www.uspto.gov/aia_implementation/first-inventor-to-file_proposed_examination_guidelines.pdf at p. 9

    “Grace period intervening disclosure exception: Under this exception, potential prior art under 35 U.S.C. 102(a)(1) is not prior art if the patent, printed publication, public use, sale, or other means of public availability was made: (1) One year or less before the effective filing date of the claimed invention; and (2) after a ‘‘grace period inventor disclosure’’ or a ‘‘grace period non-inventor disclosure’’ as those terms have been discussed previously.
    An affidavit or declaration under 37 CFR 1.130(a)(1) could be used to establish that the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor beforethe disclosure of the subject matter on which the rejection is based. Such an affidavit or declaration under 37 CFR 1.130(a)(1) must establish that the subject matter disclosed in the cited prior art had been publicly disclosed by
    the inventor or a joint inventor before the disclosure of the subject matter on which the rejection is based.
    Specifically, the inventor or joint inventor must establish the date and content of their earlier public disclosure. If the earlier disclosure was a printed publication, the affidavit or declaration must be accompanied by a
    copy of the printed publication. If the earlier disclosure was not a printed publication, the affidavit or declaration must describe the earlier disclosure with sufficient detail and particularity
    to determine that the earlier disclosure is a public disclosure of the subject matter.”

    This guideline could not be more clear. The affidavit required does NOT require proof that the later disclosure was derived from the inventor. The affidavit does NOT require proof that the form of the disclosure is identical. It merely requires proof that the subject matter had been previously publicly available, and in what form.

    Like I said, I don’t have a horse in this race, but I wonder whether the “wait to file” is good advice. And, by the way, what is the harm in publishing first and then filing? Even if I am wildly wrong (and I really don’t think I am on this one), then the worst that happens is that all later publications are prior art. But so what? They would be anyway. I guess your concern is sitting and waiting before filing, and if it turns out that it is prior art, then you lose protection. Well, that’s true. You don’t want to delay. But also because you might well think of new claims, and you won’t be able to protect those if they aren’t in your original disclosure. So, I’m with you on filing as early as possible, but I’m not getting the harm in publishing first when someone else’s disclosure can only hurt you in any event. (and will be potentially much WORSE if you didn’t publish)

  38. Are you finally all getting the point we argued before passage of the AIA that there is no real grace period under the AIA?

    Are you finally getting the point we argued that the AIA will set us back to 1793, when U.S. patent law provided no grace period? Read Max’s comments above; Americans could have attempted to do then what Max tells us Europe did since the 1960’s – try to work at the margins, crafting a more predictable zero grace period straightjacket around the invention process. Rather, it took 46 years (until the Act of 1839) for Americans to recognize that the problem is not the predictability or internal consistency of the straightjacket – it is having the straightjacket to begin with! Since 1839, the American grace period allowed the inventor sufficient time to experiment and perfect his invention and, as a corollary, his patent application. It discourages ‘paper inventions’, sketchy disclosures and incomplete patent applications. It facilitates finding investors and commercialization, encourages experimentation, field testing under service conditions and efforts to perfect an invention. However, all of these factors were not available in the rest of the world and look at where their innovation stands compared to that in the U.S. despite of the fact that, when properly empowered, inventors in the rest of the world are not inferior to U.S. inventors.

    Will it take us another 46 years to recognize that AIA’s regression to 1793 was a mistake? Or will we follow the rest of the world which has never learned in the first place?

  39. No, I’m just getting the point that some people are misreading this statute. I get the fear, I really do, but I continue to think it is unwarranted here. Indeed, my question to you after reading the PTO guidance which appears 100% to the contrary of your reading, is “Are you finally getting the point that you are not interpreting the statute the way it was meant to be interpreted?”.

  40. Michael: “Are you finally getting the point that you are not interpreting the statute the way it was meant to be interpreted?”.

    Are you not getting the point that “the way it was meant to be interpreted” is not for you or me to decide? – that this uncertainty is a core problem in the AIA. Are you also not getting the point that while the USPTO must give guidance to examiners, “the way it was meant to be interpreted” cannot be decided by the agency because it lacks the rulemaking power to do so? Do you not get the point that USPTO’s interpretation of the statute enjoys no deference – not even Skidmore deference – by the courts?

    Finally, I doubt that as an academic you have patent applicant clients. If you did, would you advise them as their attorney to act in any way other than to assume that there is no grace period under the AIA? Do you have malpractice insurance?

  41. I don’t prosecute patents, but I still have startup clients, and they still seek advice from me, and I do have malpractice insurance. I also train many new lawyers every year, and I have an interest in making sure that they are not giving bad advice to their clients (no complaints so far).

    I would tell my clients to file as early as possible, because even though there is a grace period, there is a lot of uncertainty about how intervening disclosures will be treated when they are not the “same” subject matter. In that case, there IS legitimate ambiguity. And I would tell my clients to file as early as possible because you have to prove your prior publication. I would also tell my clients to file as early as possible because you might want to expand your patent and you don’t get protection for the stuff you don’t disclose. So we are on the same page for the most part.

    But like I said above – if you want to treat things as not having a grace period, you had better get those applications written quickly, because the consequence of telling clients NOT to publish and then having them preempted can be pretty huge. Indeed, that risk is about 100x the risk of publishing and then filing, so long as you don’t delay your filing by resting on your laurels. AND, as another commenter noted, what are you going to tell the client that already published? Forget about it, you’re too late because there is no grace period?

    So, the end result of the way this law is written provides a grace period, but not one that is iron clad by any means.

    The debate I’m having here is about simple statutory interpretation. I think the difference between the way I am reading the statute and you are, is that mine actually fits with the words of the statute and yours does not. The people who wrote the bill, the PTO, every academic, and virtually every practitioner is reading the plain words of the statute the way I am. We could all be wrong – some judge on the Federal Circuit could agree with you in the end. But I just don’t think so – and I have yet to see any – not one shred – of persuasive parsing of the words of the statute in a way that supports your interpretation of it. So yes, sometimes a cigar is just a cigar. We COULD read this statute to not have a grace period, but given that the entire world thinks that it does give one, I am pretty confident there will be one, however weak it might be in actual practice and proof.

    I’m out of cycles on this particular topic…

  42. I have had to listen for years and years to criticism from US patent attorneys of First to File patent law that it forces filings before the invention is worked out, filings that are therefore mere speculation and therefore damaging to “quality”.

    Ironic then, that under the AIA the need to file really really early is more essential than anywhere else in the world.

    Why that? Well because you are vulnerable to obviousness attacks build around the disclosure content of what others filed just the day before you. In every other jurisdiction in the world, that one day earlier filing can be used ONLY against your novelty and, as we all know, overcoming novelty attacks is really rather simple, when compared with crafting a claim that resists all USPTO obviousness objections. Whatever you do, DO NOT be second to file at the USPTO when the AIA cuts in.

    The AIA is First to File Jim, but not as we know it. FItF is warp speed FtF, more “aggressive” than anywhere else on Earth. Americans, I have come to believe, would have it no other way.

  43. In every other jurisdiction in the world, that one day earlier filing can be used ONLY against your novelty and, as we all know, overcoming novelty attacks is really rather simple, when compared with crafting a claim that resists all USPTO obviousness objections.

    Max,

    Once again, I am enjoying your educational insights into EU patent law. Are you saying that if I file a patent application in Europe after another person files theirs, but before the earlier application is published, that the earlier filed application can only be used in a rejection of my claims based on lack of novelty, and not a rejection based on lack of inventive step?

  44. Mark, Yes. see the EPC, Articles 54 and 56. Art 54 defines the immensity of the prior art universe and Art 56 tells us we can apply it all to obviousness. Except that Art 54(3) adds to that universe the disclosure content of earlier filings at the EPO that get to be EPO-published later. But then Art 56 tells us that, for obviousness attacks, Art 54(3) art is off limits.

    Here’s the underlying logic of all that.

    Art 56 tests obviousness relative to everything the PHOSITA could have known, at the filing date, but nothing more than that.

    Art 54 regulates who gets what to issue, amongst the community of filers who, independent of each other, all filed at the EPO for non-obvious subject matter. Obviously (ha ha) Ms A, the First to file an enabling disclosure , gets what she asked for, while Dr B, Herr C, Signor D and all those further down the queue get what if anything is left over in their application disclosure, still novel over the disclosures of those higher up the queue.

    The best thing about all this is that it makes good sense to inventors. They see the logic and the fairness. Inventors B, C and D usually get something out of it.

    I believe some folks suspect that Big Corp for this very reason disfavour these provisions of the EPC. I gather that they prefer a Winner Take All system.

    Come to think of it, isn’t that so of most Americans?

  45. Max,

    Excellent exposition. So in the EU, Ms A can get exclusive rights to the inventions she described in her patent application, but others may get patents on obvious variations that she neglected to disclose. She could get locked out of what she made obvious. In the US, Ms A will get exclusive rights to inventions she describes and she also has rights to at least practice obvious variations she neglected to disclose since no one else will be able to get a patent on them.

    Is that still “winner take all”?

  46. By the way, for those concerned with the question of just how fast you should file, you might want to review “First-to-File and the Speed of Technology Evolution” http://www.ipwatchdog.com/2011/10/12/first-to-file-and-the-speed-of-technology-evolution/id=19846/

  47. More than ever “Winner Take All” isn’t it Mark?

    True under EPC law she could “get locked out of” all sorts of stuff of which never entered her head. So what? That’s the general rule, the risk everybody runs, isn’t it?

    You’ve got stuff? Well, publish it or patent it then but don’t just do neither of those otherwise somebody else might patent it.

    She could publish, the day after filing at the PTO. That would stop anybody patenting any obvious variant of the content of her filing. Or she could wait till the PTO does it for her, A-publishing her application a few months later.

    Or am i missing your point somehow?

  48. No, you’ve got it.