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A Brave New Patent World – First to File Becomes Law


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: March 16, 2013 @ 1:12 pm
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President Obama signs the AIA on Sept. 16, 2011, setting the stage for first to file.

The America Invents Act (AIA) was signed by President Barack Obama on September 16, 2011. The most significant changes to U.S. patent law did not go into effect right away. Rather, there were waves or phases of implementation. The second phase of AIA implementation was ushered in on September 16, 2012, which brought with it a host of new post-grant procedures, supplemental examination, changes to the oath or declaration requirement, and other various items. By any objective measure phase two ushered in massive changes to patent law and procedure.

By comparison, however, the second phase of AIA implementation pales in comparison to the third phase of AIA implementation. Effective on Saturday, March 16, 2013, the United States is now a first to file country, abandoning the first to invent laws that were long the hallmark of U.S. patent law and practice. The oddity, however, is that what has been adopted is not really a first to file system. There are some exceptions whereby a person who files second can still prevail, but those exceptions are infinitesimally insignificant, and the law surrounding the parameters of the exceptions is non-existent and unfortunately rather ill defined by the USPTO at this point.

It is also critical to understand that the new law contains traps and loopholes. For those who have not spent adequate time considering the many nuances of the law you will be surprised to learn what it really means. For example, did you know that long held and previously unpatentable trade secrets can now be patented? It seems unthinkable, but then again it is also unthinkable that the law will allow for the re-patenting of inventions, but it does that as well.

What Changes

So what exactly does the AIA change? The USPTO summarizes the changes that go into effect on March 16, 2013 as follows:

(1) Convert the U.S. patent system from a ‘‘first to invent’’ system to a ‘‘first inventor to file’’ system; (2) treat U.S. patents and U.S. patent application publications as prior art as of their earliest effective filing date, regardless of whether the earliest effective filing date is based upon an application filed in the United States or in another country; (3) eliminate the requirement that a prior public use or sale be ‘‘in this country’’ to be a prior art activity; and (4) treat commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of 35 U.S.C. 102, as well as 35 U.S.C. 103. These changes in section 3 of the AIA are effective on March 16, 2013, but apply only to certain applications filed on or after March 16, 2013.

Honestly, it is impossible to in any single article or series of articles describe the magnitude of the changes ushered in by first to file. This is because Congress has fundamentally altered the definition of what is considered prior art. An applicant is still entitled to a patent unless there is prior art that renders the claimed invention unpatentable because it is not new or because it is obvious. But what references and information can be considered prior art? That is where things have fundamentally changed.

Consider the following:

  • On Friday, March 15, 2013, a secret sale of a device more than 12 months before U.S. filing would have precluded a patent from being obtained. Effective Saturday, March 16, 2013, a secret sale of a device is never going to be prior art no matter how long ago it happened.
  • On Friday, March 15, 2013, a foreign patent or foreign patent application would not be considered prior art as of the foreign filing date. Effective Saturday, March 16, 2013, a foreign filing date can be a prior art event.
  • On Friday, March 15, 2013, an applicant could file a U.S. patent application covering an invention that was the subject of a publication provided the publication was dated less than 1 year earlier. This was true even if the publication was by another individual or entity that independently arrived at the invention on his or her own. Effective Saturday, March 16, 2013, if another individual or entity independently arrived at the invention and published an article before the first inventor filed the first inventor who filed will be unable to obtain a patent.
  • On Friday, March 15, 2013, you could not file a patent application on something that you had long kept as a trade secret process. Effective Saturday, March 16, 2013, long held trade secrets could be patented.

These are but a few of the changes and nuances contained within the AIA and implementing rules.

The Grace Period

Let’s take a step back and consider the so-called grace period. Under the new law we know that in some cases an inventor who publishes information about his or her invention will not be prevented from obtaining a patent if someone obtained or derived a subsequent disclosure from the inventor. The USPTO has told us that the second party, the deriving party, does not have to publish something that is verbatim in order for the true first inventor to be able to prove that the second party is a deriving party. Let that sink in. The USPTO says that the second party does not have to publish something verbatim. How is telling me what they don’t have to do useful when trying to figure out what to tell clients?

The trouble with the so-called grace period is that it is not defined. The USPTO has explained the grace period with generalities and in the negative. But telling me something is not “white” doesn’t do much to tell me what color it is, does it? It eliminates but a single choice and opens up additional questions. In the case of the grace period those questions are simply not answered and won’t be until unwitting souls rely upon its existence and the Patent Trial and Appeal Board or the Courts give us the answer on the peculiar facts presented.

What does this mean? It means first to file absolutely needs to be treated as file first! While we do not now have a pure first to file system anyone who relies on the existence of a grace period really is foolish in the extreme. File first. File often. With any invention there will be a stream of conceptions and reductions to practice. File as soon as you have an articulated invention that is susceptible to adequate description through words and drawings. File first. File often.

Trade Secrets Now Patentable

This will seem almost unbelievable to many, but as of March 16, 2013, long held trade secrets are now patentable. In fact, should Coca-Cola want to patent a secret process for making Coke they would be able to do so. But how is that possible?

35 U.S.C. 102 (a)(1) now reads: “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…”

The USPTO explained their interpretation of the critical “or otherwise available to the public” language as follows:

Residual clauses such as ‘‘or otherwise’’ or ‘‘or other’’ are generally viewed as modifying the preceding phrase or phrases. Therefore, the Office views the ‘‘or otherwise available to the public’’ residual clause of the AIA’s 35 U.S.C. 102(a)(1) as indicating that secret sale or use activity does not qualify as prior art.

Therefore, if you have a long held trade secret — and really kept it secret — it simply will not be considered prior art any more for a patent application. So if you have been told you couldn’t patent a long held trade secret you should re-evaluate. Those trade secrets are patentable now when on March 15, 2013 and earlier they were not.

The Re-patenting of Inventions

Not every claimed invention will be able to be re-patented, but there will undoubtedly be some that will be able to be re-patented. This is possible thanks to 35 U.S.C. 102(b)(2)(C), which says:

A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if — 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.

Subsection (a)(2), otherwise known as 102(a)(2), says:

A person shall be entitled to a patent unless— 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.

So, if a patent or published patent application is commonly owned it may not be considered prior art against an identical set of claims in a subsequently filed patent application.

Of course, 102(b)(2)(C) does not eliminate prior art that qualifies under 102(a)(1), but 102(a)(2) makes the patent application prior art as of its effective filing date of the claimed invention. So if you keep your invention secret and file a patent application it will be secret (and not prior art) up until the application publishes 18 months after filing. If you then re-file a second application with identical claims before publication of the first application there would be no 102(a)(1) prohibition. 102(a)(2) would make that first filing prior art as of its effective filing date, but if you remove 102(a)(2) through common ownership then a common owner would be able to effectively extend their patent term by up to 18 months; longer if publication doesn’t occur at 18 months.

On limiting factor of 102(b)(2)(C) is that the second or subsequent application containing identical claims would need to be filed by another inventor. Nevertheless, look for pharmaceutical companies to seek to exploit this re-patenting loophole. An extra 18 months of patent protection could mean many billions of dollars for a blockbuster drug.

Conclusion

The moral of the story is this: Don’t assume you know what first to file means, or you know what the AIA contains. There are traps and loopholes that will need to be avoided and ought to be exploited.

If you have questions about the AIA please contact me and we can arrange for a consultation.

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Posted in: America Invents Act, Gene Quinn, IP News, IPWatchdog.com Articles, Patent Basics, Patent Prosecution, Patents

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.

 

39 comments
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  1. In regards to patenting trade secrets > 1 year old, I agree that the new statute does not ban such a practice. But did the legislators actual intend to repeal the spirit of 102(g)(2)? Let’s consider the addition of section 273, the exemption for prior commercial users of an invention: it’s obvious that the legislators want to provide some protection to investments even when those investments don’t reach out for patent protection. But did the legislators also mean to provide double-extra protection in the form of 20-years exclusive use on-demand for any trade secret holder? This would provide such a huge market advantage for trade secrets holders. It seems likely that a judge would see the straightforward interpretation as bad policy and a bad assumption as to the intent of the legislators. Maybe you can cite some legislator saying otherwise, but I think the CAFC will unceremoniously reaffirm the holding from Metallizing Engineering Co. (153 F.2d 516 (2d Cir. 1946) in the next couple years.

  2. Perhaps surprisingly, the patenting of long-held trade secrets is possible in many countries, including throughout Europe under the European Patent Convention.

    The notion that gaining commercial benefit from an invention, in the absence of an enabling disclosure, should preclude patenting seems to have become something of a historical oddity. Australia and New Zealand still retain a prohibition on obtaining a valid patent if there has been “secret use” prior to filing, inherited from the older English law (pre-EPC). I suspect that many of the other countries that retain similar policies and provisions are also members of the Commonwealth.

    The notion that someone should be able to add a 20-year monopoly, at will, on top of an arbitrary period of trade secrecy, does not seem quite right to me. But I have come to accept that much of the world thinks differently about this issue, so the US is probably making the right move here, in terms of providing the same opportunities to US applicants as are available in Europe or China.

    Mark

  3. Gene,

    Thanks.
    Much food for thought regarding the tactics one might undertake using 102(a)(2).
    I had not before focused on that section.

    Also did not realize that the “conceal, suppress” parts of old 102 are now gone.

    It is indeed a brave new world.

  4. I am far less concerned about giving of patents to previous trade secrets as “new to you” is in fact still new.

    I have also posted in the past that the coverage of of time periods between trade secrets and patents falls under two different legal realms.

    It is a mistake of conflation to mix the two.

    A quick point shows the fallacy: Under trade secret coverage, protection is theoretically forever. If one insists on conflating the coverage, then logically the constitution must forbid trade secrets. You cannot logically have the time of protection under trade secrets fall under the constitutional clause in one instance (moving from a trade secret position and deciding to move into the patent realm) and not in the other (staying in the trade secret position). The “offending” portion of coverage is EXACTLY the same (the non-patent realm portion). You cannot be offended (constitutionally) in one instance, but not in the other.

    Once you decide to enlist the protection of the patent realm, you HAVE decided to limit your time of protection.

    Further, this is analogous to the “uncertain” time of protection afforded copyright in the term of “life plus.” No one is making the argument that since “life” is unknown (and virtually unknowable), that the copyright term fails constitutional scrutiny, are they? Of course, the analogy is not perfect, as if society were to uncover a fountain of youth, or medical advances were to be obtained as to prolong life indefinitely (long the fancy of mankind as witnessed by our literature), the laws governing copyright term would likely be challenged. But the important contrast still remains: trade secret protection time is governed under a different law than patent protection time, even to the point that the law traces to different parts of the constitution, to different parts of the government structure (state versus federal).

  5. FIle first and file often, but “better late than never” still applies if the invention was disclosed less than a year before. The grace period is there as a safety net, albeit imperfect and further weakened by AIA. Not something to deliberately rely upon, but still potentially available when inventors in the real world fall short of the ideal patent filing strategy.

  6. Gene, a discussion about re-patenting needs to take into account that “double patenting” [both 101 statutory double patenting and judicial "obviousness type" double patenting] is still in effect.

    Also, as previously discussed, the Metallizing Engineering Doctrine is a non-statutory purely personal “forfeture,” that is, an equitable estoppel, and thus not necessary overuled by the 102 statutory change. and its interpretation. Your encouragement here of filing patent applications on old secret commercial processes may get that issue judicially decided sooner! But I would not recommend concealing from the PTO in such applications the more than one year prior secret commerical use of the claimed invention before that judicial resolution.

  7. While looking up the USPTO videos on the AIA, which seem to be mostly like the *New Rules for Dummies*, I happened to find a very interesting video of Chief Judge Michel giving a talk at the U of VA on *patent reform*. To give you an idea of what he thinks of the AIA, he made a very specific point of calling it a patent revision, as opposed to patent reform, because the term *reform* implies improvement.

    Most of the video is about the history of patent reform attempts in the past, which I found to be fascinating, since I was very active in trying to get the independent inventors’ views heard in pre- AIA attempts, by way of resisting what I thought would be new laws that would have been very detrimental to our best interests. The video is 59 minutes long, and I was extremely impressed with what an intelligent and wise man Paul Michel is. He talks about what the AIA might actually mean going forward in about the last 15 minutes of the video.
    http://www.youtube.com/watch?v=J96KjAbEwQo

    Cheers,
    Stan~

  8. Paul-

    I disagree that obviousness type double patenting is still in effect. I understand that is the position of the USPTO, but they are incorrect.

    In order for something to be useful in order to combine to support a 103 rejection it must be prior art under 102. Section 102 defines prior art. If it is not prior art under 102 then it cannot be combined to support a 103 rejection. Therefore, double patenting of the obviousness type will not survive first to file changes unless Courts determine that 102 is not the exclusive definition of prior art. Sadly, that might be the case as the full ramifications of Mayo v. Prometheus come into focus. Until 101 defines prior art though double patent of the obviousness type is no more.

    -Gene

  9. Paul,

    I believe that we have traded comments on this subject before:

    Also, as previously discussed, the Metallizing Engineering Doctrine is a non-statutory purely personal “forfeture,” that is, an equitable estoppel, and thus not necessary overuled by the 102 statutory change

    You offer nothing new to the discussion here (and sadly, you have nto chosen to respond to my comments previously). I would point out to you (as I too have done before) that the commentary and even the naming of this section of law reflects a fundamental change that has removed the personal and equitable aspects that you wish to preserve.

    Whether or not this move by Congress was a wise move, a move the judiciary would have made, is quite besides the point. The judiciary are not charged with rewriting the law to return this aspect to it.

    The Metallizing Engineering Doctrine is gone.

  10. “?On Friday, March 15, 2013, a secret sale of a device more than 12 months before U.S. filing would have precluded a patent from being obtained. Effective Saturday, March 16, 2013, a secret sale of a device is never going to be prior art no matter how long ago it happened.”

    I’m a big fan of this change. Over and over I have had to explain to clients about “secret sales and secret offers” and the like (and even a secret license agreement could in some situations be considered a “sale”). Not inquiring about these activities could result in malpractice (Gunn v Minton?) I have declined filing a patent in at least one occasion due to a “secret sale” one year prior in time. it’s difficult to explain to a client that because they offered to sell their invention to a relative more than one year ago (who declined the offer), they nevertheless cannot now file their patent application.

    Any changes to make our jobs easier is always welcome.

  11. If you had attended the live presentation during the USPTO presentation, you might have been able to discern *what in the world* Congress was contemplating when they actually managed to get the America Invents Act passed.

    While watching it on C-Span, I witnessed a seemingly very confused and nearly speachless Senator Patrick Leahy proudly display his large sign and *slides* to elucidate what was so great about the AIA. He looked rather a lot like a snake that was so proud of his efforts to *improve and harmonize* our patent laws with the rest of the world.

    Director Kappos applauded the efforts, but he perhaps had or has a very different agenda than many others. Lest we forget, IBM was only one af many voices seeking to try to to disable smaller entities. I really still tend to believe that a major portion of their efforts to subvert traditional patent rights is because they got caught willfully infringing known patent rights.

    When the National news lets everyone know that Micky-Soft or whomever got busted for a half Billion dollars or so, it is painfully embarrassing for them. It spreads like wild-fire, and they are painfully exposed as to who and what they really are.

  12. Pardon my disparaging remarks about Senator Leahy. After spending about a month and a half full time trying to get the attention of the Senate as to what the effects of the patent revision efforts of 2007 might be, I came to the conclusion that some didn’t really seem to care very much at all what might happen to independents. I managed to get a letter with 435 signatories into both Senator McConnell and Senator Reid’s offices with a reciept from both. Fortunately that attempt at patent revision failed, but I became a bit jaded about what their true motives might actually be. About 30 or so of the signatories were patent attorneys and patent agents, several of whom attend here on a fairly regular basis..

  13. I agree with Paul Morgan on two points –

    – Metalizing Engineering is pure judge made law, not statutory. Thus a statutory change doesn’t necessarily overrule Metalizing Engineering. The basis for Metalizing Engineering is constitutional. The legislative history is all over the map, even two successive sentences can be contradictory. Congress does not hide constitutional elephants in mouseholes. I agree with Paul that the question is open, I disagree with Gene that “The Metallizing Engineering Doctrine is gone.” That’ll take a decade of litigation to decide.

    – On double patenting, again I agree with Paul and disagree with Gene. Near-same rationale — it’s judge made law, and there’s no mention in the legislative history of intent to repeal it. Gene’s “it isn’t prior art any more” rationale seems irrelevant to me, since double patenting has *always* been about cases where neither patent is prior art to the other.

  14. In order for something to be useful in order to combine to support a 103 rejection it must be prior art under 102.

    Gene,

    I used to think so as well, but what about a more-than-one-year-old published parent application being cited against the claims of a CIP? The parent cannot be cited in a 102 rejection because then the claims would have support in the parent. The parent can be cited in a 103 rejection, however, because the claims cannot be supported in the parent.

    Does the AIA change this?

  15. Mark-

    It sounds like what you are saying is that the claims are not supported by the parent, is that correct? In this situation the publication of the parent would be a prior art event under 102(b). So the parent could be used in a 103 rejection because it would be prior art under 102(b).

    What am I missing?

    -Gene

  16. David, Paul-

    Let me just say this… I am not taking any substantive position on whether or not Metallizing Engineering has actually be overruled. I’m not convinced it has been overruled either, and think it is dangerous to assume it has been overruled. The USPTO is clearly of the opinion it has been overruled. In the long run we will need the CAFC to ultimately decide.

    In terms of double patenting, is there something obvious I am missing? I know same-type is based on 101, but isn’t double patenting of the obviousness type based on the law of obviousness? Is it possible to reject a claim as being obvious when the references do not qualify under 102? I think the answer to that is no.

    -Gene

  17. Doesn’t the doctrine of equivalents figure into this in some manner? The seeming allowance of double patenting would seem to go right past the whole concept of the definition of what constitutes an *invention* to me. I always thought that trying to patent things twice was mostly the worst type of *bad inventor* type of behavior. “Bad Inventor! Invent something New!”

    Stan~

  18. Gene, quite recently the Fed. Cir. in the Hubbell decision provided this summary of the doctrine of obviousness-type double patenting:

    Obviousness-type double patenting is a judicially created doctrine designed to “prevent claims in separate applications or patents that do not recite the ‘same’ invention, but nonetheless claim inventions so alike that granting both exclusive rights would effectively extend the life of patent protection.” Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1373 (Fed. Cir. 2005) (citation omitted). It prohibits the issuance of claims in a second patent that are “not patentably distinct from the claims of the first patent.” In re Longi, 759 F.2d 887, 892 (Fed. Cir. 1985) (citations omitted). A later patent claim “is not patentably distinct from an earlier claim if the later claim is obvious over, or anticipated by, the earlier claim.” Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 968 (Fed. Cir. 2001) (citations omitted).

    The court explained that “[t]here are two justifications for obviousness-type double patenting.”

    1.The first is “to prevent unjustified timewise extension of the right to exclude granted by a patent no matter how the extension is brought about.”
    2.The second rationale is to prevent multiple infringement suits by different assignees asserting essentially the same patented invention.

  19. Paul-
    The operative part of your very interesting conjecture would seem to be that it is a juducial decision, and Not a Federally mandated fiat. If the US court systems cannot agree, what do we really have? Perhaps very little for several years. In other words, nobody seems to know what the legislation as written actually represents, until or unless the courts provide some sort of *guidance*, whatever that is supposed to mean.

    Risky times for new inventions here in the US, but hopefully things are somewhat better for those on the other side of the Pond these days.

    Cheerio,
    Stan~

    .

  20. Gene –

    You ask

    In terms of double patenting, is there something obvious I am missing? .. .. isn’t double patenting of the obviousness type based on the law of obviousness? Is it possible to reject a claim as being obvious when the references do not qualify under 102?

    No. The test for obviousness-type double patenting is not the same as the Graham analysis. The Federal Circuit cataloged some of the differences in Geneva Pharms., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1377 n.1, 68 USPQ2d 1865, 1869 n.1 (Fed. Cir. 2003):

    The distinctions between obviousness under 35 U.S.C. § 103 and nonstatutory double patenting include:
    1. The objects of comparison are very different: Obviousness compares claimed subject matter to the prior art; nonstatutory double patenting compares claims in an earlier patent to claims in a later patent or application;
    2. Obviousness requires inquiry into a motivation to modify the prior art; nonstatutory double patenting does not;
    3. Obviousness requires inquiry into objective criteria suggesting non-obviousness; nonstatutory double patenting does not.

    In obviousness-type double patenting the reference patent need not be § 102 prior art at all. In the overwhelming majority of cases, the reference patent is a sibling, either a voluntary divisional or an involuntary divisional where claim amendments destroyed “consonance.”

  21. Consonance n: 1; Agreement, Harmony 2; Repetition of consonants, esp. as an alternative to rhyme in verse. Merriam Webster dictionary (C)

  22. Paul-

    The quotation from that case helps my position. The case says:

    “It prohibits the issuance of claims in a second patent that are “not patentably distinct from the claims of the first patent.” In re Longi, 759 F.2d 887, 892 (Fed. Cir. 1985) (citations omitted). A later patent claim “is not patentably distinct from an earlier claim if the later claim is obvious over, or anticipated by, the earlier claim.”

    Thus, in order for their to be double patenting the later claim must be obvious over the earlier claimed invention. So the earlier claimed invention is being used in combination with other references to render the claims of the second patent obvious. Thus, the earlier patent is being used as prior art to support an obviousness rejection.

    The real trouble I have is this — if same type double patenting continues under 101 and obviousness type double patent continues under 103, then the exception for commonly owned references being prior art under 102(b)(2)(C) is superfluous. What good is it to say that a commonly owned reference is not prior art under 102(a)(2)? If it can still be prior art under 101 and 103 thanks to judicially created double patenting then Congress has enacted something without any meaning.

    -Gene

  23. David-

    Then what does 102(b)(2)(C) mean? It seems that your reading is that this section provides no benefit whatsoever.

    -Gene

  24. I , too, have always understood “obviousness-type” double patenting to have very little to do with “conventional” obviousness. The name is a convenient shorthand for “OK, I can see that you are not claiming exactly the same thing in this second application, but even so these claims are not patentably-distinct from those in the other application.” So obviousness-type double patenting is to obviousness as (statutory) double patenting is to novelty, and really nothing to do with 35 USC 103.

    In Australia, we still have the rather quaint “patent of addition”, which is the type of patent you file (or convert to) if you want to claim something which is novel, but obvious, over your own earlier patent disclosure. A patent of addition remains tied to its parent, remaining in-force only for as long as the original patent lives – much like the effect of a terminal disclaimer, but with the benefit that no maintenance fees are payable on the dependent patent. You could compare it to a CIP with an obviousness-type double patenting problem!

    Mark

  25. I am seeing a lot of “judicial” with no resting on the actual law.

    Sorry, I am unwilling to believe that that much power is left in the hands of unaccountable judges. If Equity overcomes law so easily, then as Gene asks, why have law at all?

  26. Gene –

    The statutory language means exactly what it says, no more, no less. § 102(b)(2)(C) carves out much commonly owned subject matter from the prior art for purposes of statutory § 102/§ 103 rejections (based on the entire content of the reference patent/application vs the claims of the target patent or application). Thus cases like Chester v. Miller, 906 F.2d 1574, 15 USPQ2d 1333 (Fed. Cir. 1990); In re Samour, 571 F.2d 559, 197 USPQ 1 (CCPA 1978); In re Lukach, 442 F.2d 967, 169 USPQ 795 (1971); In re Ruscetta, 255 F.2d 687, 118 USPQ 101 (CCPA 1958) come out differently.

    § 102(b)(2)(C) says nothing specific about double patenting, where the issues is solely claims vs claims.

  27. Anon @ 25:

    > I am seeing a lot of “judicial” with no resting on the actual law.

    So I can give you an answer that makes sense in your frame of reference, who are you? (Not by name, please stay anonymous) Are you an examiner, patent agent, attorney, etc. In what country? What experience do you have with the American legal system?

  28. Thanks David – US based primarily, prosecution with limited litigation experience – but with extensive engineering and management experience (start-ups to mid-sized firms) from my pre-law era.

  29. Judges make law. They have been making law since the late 1100s, several hundred years before parliament had the power to make law. The constitutional power of U.S. judges to make law, and the historical intertwine of judge-made law with statutory law, is explained nicely at http://en.wikipedia.org/wiki/Common_law

    The doctrines discussed here, Metallizing Engineering (secret commercial use as a non-statutory bar) and obviousness-type double patenting, are both entirely judge-made law. In the U.S., judge-made common law is fully as much “actual law” as anything else.

  30. I understand common law.

    I reject that law when it comes to making patent law.

    I think the Constitution was more than a little bit specific about where that power properly lies.

  31. David-

    All of section 2 is a very interesting reminder of how things work here in the US, and especially section 2.5. which explains quite clearly why patent litigation in particular is so complex and expensive. Also the principle of the triumvirate of authority to create law and create a system of checks and balances would seem to apply in this instance. (the AIA and FITF) The odds would seem slim that Congress or the Executive branch will have anything more to say in the matter, so we would seem to be at the mercy of whatever the Judicial branch decides.

    I sure wish Chief Judge Michel was still active right about now, and who knows What the Supreme Court will do next? I got the impression that Paul felt he could best serve our interests by retiring so that he could speak out freely, to try to prevent the passage of detrimental “patent revision.”

  32. Anon –

    One definition of “sanity” is “abject submission to reality.”

    Under our Constitution as it actually exists, who makes the decisions about what a statute means, and whether to fill in gaps where a legislature neglected to speak, and how? Judges. The Constitution expressly places that power in the judiciary. That was understood before the Constitution was ratified, and it’s been one of the foundations of American law since Marbury v Madison. it seems you’re not a lawyer, but if you want to hold yourself out as a patent agent, your ethical duties to your clients demand that you understand the fundamental basics of how the U.S legal system works.

    If you don’t feel you can work within the system as it actually exists, you can’t representing your clients well. If you don’t like the legal system as it actually exists, and you want to practice law in some other legal system that you imagine, you should request that your clients pay you in imaginary money. At the very least, you should fully inform your clients of your approach before you accept a retainer.

    David

  33. Humor -

    An Analogy: Congress compared with System Architecture/Design (in tech fields):

    The “new system” (e,g., patent system) is approved and put into use, without running stress-case scenarios to see how (or how-well) the system will work.

    The previously known stress cases are ignored and little attempt is made to find all new stress cases; for testing before the system is approved and placed into operation.

    The system is not questioned (about what will happen) until after someone is later hurt by the system in a stress-case.

    Maybe Congress should consider: Congress provides Requirement/Wants –>> multiple system architectures –> model/test versus stress cases –> iterate on requirements & architectures until system tests/works well –> Congress approves known/tested system –> place system into operation.

    Uncertainty is reduced.

  34. Invetor0875,

    You misunderestimate your Congress critters

    When they arrive at your door and say, “We’re here to help”, they mean ….

    When they arrive at your door and say, “We’ve designed a faster, cheaper, better and more ‘streamlined’ patent system,” they mean ….

    Well no point in philosophizing anymore.
    The stuff hit the fan on March 16, 2013.
    Our Titanic is taking on water.
    Time to play “Nearer My God to Thee”.
    http://www.snopes.com/history/titanic/lastsong.asp

  35. Yesterday’s Kirtsaeng decision is highly apropos of our discussion here –

    http://www.supremecourt.gov/opinions/12pdf/11-697_d1o2.pdf at page 17 –

    … “[W]hen a statute covers an issue previously governed by the common law,” we must presume that “Congress intended to retain the substance of the common law.” Samantar v. Yousuf, 560 U. S. ___, ___, n. 13 (2010) (slip op., at 14, n. 13). See also Isbrandtsen Co. v. Johnson, 343 U. S. 779, 783 (1952) (“Statutes which invade the common law . . . are to be read with a presumption favoring the retention of long established and familiar principles, except when a statutory purpose to the contrary is evident”).

  36. In case you haven’t seen it yet, Dennis Crouch posted a blog this morning about the Kirtsaeng decision that seems to suggest that the decision in that Copyright case of exhaustion would seem to imply that the same factors might also apply to patents by inference (i.e.-IP rights) in future patent cases.
    http://www.patentlyo.com/patent/2013/03/first-sale-doctrine-authorized-foreign-sales-exhaust-us-copyrights-and-us-patents.html?utm_source=feedburner&utm_medium=email&utm_campaign=Feed%3A+PatentlyO+%28Dennis+Crouch%27s+Patently-O%29

  37. I take some of the blame for the apparent condescension from Mr. Boundy, as my post at 30 was not clear enough regarding the accepted role of common law in the IP realm.

    However, there remains a world of difference between interpretation and gap filliing and the equally apparent (and Lochnerian) insertion of writing patent law that does not have a basis in the Congress determined schemes.

    Or, to be polite, David’s response at 32 is a surprising cheap shot that does not follow up with his request for understanding of my background in relation to earlier posts (and leaves the earlier posts unanswered).

  38. Gene, you state that trade secrets are now patentable.

    Wouldn’t those two things be inconsistent?

    Patents by definition are available to the public. Trade secrets are just that, meant to be private and away from the public.

    Thus, if for instance Coca-Cola would make their formula a patent, the public would see it. I do not see the value in this for them as then the public can modify Coca-Cola’s trade secret by adding something ‘new’ to it, creating a new type of Coca-Cola for example, and thus a new patent. This would harm Coca-Cola more than it would help them.

  39. Dave-

    There might not be value for Coca-Cola, but if they wanted to patent their formula they now can, which is ridiculous since it has been used in commerce for over 100 years. For others with trade secrets it might make sense to obtain a patent and thereby inform the public of the trade secret in exchange for patent rights they could assert against others.

    -Gene