America Invents: Lies, Damn Lies and Legislative History

By Gene Quinn
September 9, 2011

The United States Senate passed the America Invents Act by a vote of 89-9 on September 8, 2011, which means that the much anticipated, discussed, reviled and acclaimed legislation (depending on your viewpoint) will become law very soon.  According to Article I, Section 7 of the U.S. Constitution, the President has 10 days to sign the legislation or it would become  law without his signature.

Article I, Section 7, in relevant part reads:

If any Bill shall not be returned by the President within ten Days  (Sundays excepted) after it shall have been presented to him, the Same  shall be a Law, in like Manner as if he had signed it, unless the  Congress by their Adjournment prevent its Return, in which Case it  shall not be a Law.

Thus, the question about when the America Invents Act will become the law of the land depends specifically on when it will be “presented to” President Obama.  As of the writing of this articler there is nothing on the White House web page of pending legislation likely to be signed in the coming days. Since the Administration has been so vocally supportive of the bill an Obama signature seems virtually guaranteed in the coming days, and then the fun starts.

The majority of provisions in the America Invents Act will not come on line immediately.  Most of the provisions will either become effective 1  year after the bill is signed or 18 months after the bill is signed into law by President Obama. Notwithstanding, the fee setting authority and the new fees for patent services will go into effect immediately, so those paying fees or filing new applications will see an increase in the very near future.

The provisions relating to the change from first to invent to first to file will come on line 18months after President Obama signs the America Invents Act into law, giving the United States Patent and Trademark Office time to come to terms with the new law.  You can expect that the USPTO will be extraordinarily busy writing rules, proposing rules and enacting rules over the next 12 to 18 months.  Simply stated, the America Invents Act is just the beginning.

The implementation of the changes to the law and how that will affect the patent process within the USPTO is not contained in this legislation.  That is not at all uncommon.  The implementing agency has authority to implement rules consistent with the legislation and the law to carry out the mandates and requirements of the legislation.  The magnitude of the change to U.S. patent laws cannot be certain until we see all the rules implemented, but it is safe to say that in 18 months little of what we know about patent practice, patent law and procedure will be completely re-written, particularly given that the USPTO already has new rules underway relative to reexamination proceedings and Appeals, neither of which were implicated by the America Invents Act.  Yes, in 18 months patent practice, patent law and patent procedure will be completely different.

Over the coming days, weeks and months the new law will be analyzed, commented upon, criticized and virtually everyone will have an opinion on what is says and what it means.  The truth, however, is we won’t really know much about what the new law means for about 5 years or so.  There is much in the new law that seems straight forward on its face, but will still require courts — both the United States Court of Appeals and the United States Supreme Court, to weigh in on.

More problematic, however, are those sections of the America Invents Act that are clear on their face but which were likely not intended as written.  Compounding this is the fact that the Legislative History will in some cases completely contradict the language of the new law itself.  An example of the Legislative History contradicting the law itself would be 102(b)(1).

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.  How likely is this?  Possible certainly and quite likely in areas where many inventors and inventive teams are working to solve the same or similar major problems.

I don’t have any doubt that this is what Senator Kyl says in the Legislative History was what was intended, but that is not what the bill says.  The bill says that an inventor cannot have his or her own publication used against them, and neither can they have a publication used against them if the subject matter of the publication was derived from the inventor prior to the inventor’s publication.  The way I read 102(b)(1)(B) is exactly opposite of what Senator Kyl says it means.  I think a compelling argument can be made that the plain meaning of 102(b)(1)(B) means that an inventor does need to prove that a subsequent publication after the inventors own publication came from information from the inventor prior to the inventor’s publication.

I suspect if we look section by section there will be many of these instances where what we were told was in the bill is actually not accurate.  I for one was alarmed by the lack of familiarity with patent law and the gross mischaracterizations of what the bill actually provides for by Members of Congress.

Why is this important?  The law is extraordinarily clear when it comes to the use of Legislative History.  Legislative History can only be consulted when the terms of a law are ambiguous.   If the terms of the law are clear based on the plain meaning of the words used then courts are not supposed to turn to the Legislative History.  You turn to Legislative History only to clear up ambiguities.  This rule makes all the sense in the world when you realize that Legislative History includes statements by Members of Congress who may or may not actually be saying things that are accurate, or may be making grandiose statements about what the entire Congress intended.  Even under the best of circumstances Legislative History is uncertain and easily manipulated, which is why when the law is clear it is off limits.

Another section where the Legislative History will not match the actual language of the bill is relative to whether the PTO will receive 100% of the user fees.  In his statement against the Coburn Amendment and in favor of tabling that amendment, Senator Leahy blatantly misrepresents what the America Invents Act means for USPTO funding.  Having watched the patent reform legislation unfold now over 6 years I can’t say this is new tactic for Leahy, or for many others.  S

Senators have a way of saying whatever it takes to win an argument or persuade colleagues (and the public).  The truth of the matter asserted is of a distant consequence.  For example, Leahy says the USPTO get to keep 100% of user fees, which is in the Legislative History now.  The terms of the bill, however, say the USPTO keeping 100% of user fees is subject to approval by Congressional Appropriations.  What does that mean?  It means that the USPTO will keep 100% of user fees paid if Congress says it can, but if an Appropriations bill conflicts the Appropriations bill will trump.  That is exactly what we have now and exactly what has lead to nearly $900 million of user fees being pilfered from the USPTO by Congress since 1992.

So the point is that there is the language of the bill, and then there is what we were told was in the bill, which actually isn’t what is in the bill if you are reading the plain meaning.  In the coming days President Obama will sign the bill and then the Courts will embark on the long journey to decipher the text and tell us what it means.  All the while the USPTO will be proposing and then enacting new rules.  Patent law, practice and procedure is in a state of flux to say the least.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 76 Comments comments.

  1. step back September 9, 2011 6:38 pm

    I for one am alarmed [, alarmed, I say] by the lack of familiarity with patent law and the gross mischaracterizations of what the bill actually provides for by Members of Congress.

    Personally, I too an shocked, shocked I say that there could be mischaracterization going on in the House (of fine repute) and in the forum of our almost-Roman Senators.

  2. ManinNH September 9, 2011 8:50 pm

    With all the Lawyer babble going on, it’s no wonder the house of cards is failing. I have 2 inventions protected with poor mans safety. I asked my congressional representatives to allocate the inferences of this new law and how it will effect these poor mans protections and all I got was an auto responder. If I could afford an attorney to do the patent searches and register the patents I would but, no bank loans a poor man money and no backer loans to a poor man. How do I get an answer???

  3. Jeremy September 10, 2011 12:54 am

    I am wondering what this means for those currently studying to take the patent bar (such as myself). Everything I have been studying has been throw out the window. I suppose I’ll take the test (hopefully pass), then unlearn it to learn the new system when it comes online in the next year.
    On another note, they say it will “streamline” the patent application process, but from some reading, it only seems to replace the interference proceedings (which is used in a miniscule number of cases) with an even more complicated “derivation” proceeding. And in the vast majority of cases, it would seem to make not much of a difference. So how will that make the system better exactly?

  4. Bob Hodges September 10, 2011 11:39 am

    Regarding 102(b)(1)(B), the new section states that a [i.e., any and every] disclosure [that the inventor is to be protected against] made less than one year before the effective filing date shall not be prior art:

    “if… the subject matter disclosed [in the disclosure that the inventor is to be protected against] 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”

    To me, this means that an inventor’s prior disclosure (or a disclosure derived from the inventor) immunizes the subject matter of the invention from any and all disclosures of the subject matter (made less than one year then the disclosure shall not be prior art) regardless of who discloses the subject matter and from where the disclosed subject matter derived.

  5. Gene Quinn September 10, 2011 12:07 pm

    Step-

    I sense a little mocking! Rightly so I suppose. I don’t want to come across as naive.

    What shocked me was the directness of the lies. I don’t expect them to be experts of everything, and in fact expect them to be uninformed on most things. What I didn’t realize is that so many would say “the bill means X” when the clear, plain language of the bill says NOT X! Watching this unfold over the last 5 to 6 years has made me very cynical. The intellectual dishonesty in DC is ever worse than most can imagine.

    -Gene

  6. Gene Quinn September 10, 2011 12:24 pm

    Bob-

    Here is how I read the new 102…

    102(a)(1) and (2) establish absolute novelty. Under (1) the inventor must file before the invention was patented, published, in public use, on sale or otherwise available to the public. Under (2) the inventor must file before another inventor filed.

    102(b) relates to exceptions to 102(a). A disclosure made 1 year or less before the filing date is not prior art if (A) the disclosure was made by the inventor or joint inventor, or (B) if the subject matter disclosed had been obtained directly or indirectly from the inventor or a joint inventor.

    Based on the statute as written it seems clear to me that (B) addresses the situation where the inventor or joint inventor has disclosed (“the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor…”) and then there is a subsequent disclosure by another. Such a subsequent disclosure by another would not be prior art if the substance of the disclosure were obtained directly or indirectly from the inventor or joint inventor. Because 102(b) relates to exclusions if the exclusion is not met that would necessarily mean that if someone published after the inventor or joint inventor and it was not derived from the inventor or joint inventor and such publication occurred before the filing date of the inventor, then that publication would be prior art.

    -Gene

  7. Anon September 10, 2011 4:41 pm

    then that publication would be prior art.

    So how do you prove a negative? If you can prove that you did not “indirectly” obtain the substance, can you thus defeat any pre-filing publication? Would a company-mandated policy of “DO NOT LOOK AT OTHERS’ WORK” for all critical R&D suffice? What does the “substance” mean? Isn’t any subsequent patent filing already claiming that “the substance” was neither directly nor indirectly obtained from anyone else (the inventor’s oath)? Does this mean that ANY publication is thus problematic?

  8. Ron Hilton September 10, 2011 8:15 pm

    Gene, I think Bob is right regarding 102(b)(1)(B), with the further clarification that the “immunization” only applies to the first to disclose the subject matter. The subsequent disclosure would still be prior art to anyone else, and does not need to be obtained directly or indirectly from the first to disclose – that requirement only applies to the first disclosure. So I think Senator Kyl’s characterization is substantially correct. I had a similar misunderstanding, but Mike Caldwell straightened me out on the NAPP forum.

  9. Stan E. Delo September 11, 2011 4:20 am

    Jeremy-

    Mostly correct in my opinion, much to my regret. It will probably take about 4 years to figure out how badly the recently passed legislation will goof things up for us all, as the language included in the AIA bill is very seriously clueless and potentially very dangerous. Both the Senate and the House seem to have no clue about how much damage they have done with the America Invents Act. The only benefits will probably be for our legislators to get re-elected, and independent inventors be damned if they have the temerity to get in their way. I heard an insider say that it used to be that Legislators used to spend about 40% of their time getting re-elected, and about 60% of their time serving the Public interest. He opined recently that the tables have turned lately, wherein about 80 or 90% of their efforts these days are dedicated to getting re-elected, so of course you are doomed if you choose to innovate and try to profit from your efforts somehow.Pretty sick in my opinion when large corporations are allowed by US Law to crush smaller entities whenever they find them to be even slightly inconvenient.

    The tide will turn some day though, as there is a pulse to things, which Mickey Softs and even the mighty Google will NOT be able to prevent or even comprehend in any real sense when they occur.Corporate greed and all like that… How many more Billions will they have to reap before they have even the slightest clue about how greedy they actually are and have been in the past. How sad that they are so greedy.

    Stan~
    .

  10. Ben Pezzner September 11, 2011 8:10 pm

    “Patent law, practice and procedure is in a state of flux to say the least.”

    Doesn’t seem like good news to those of us studying for the patent bar!

    Thanks for the article, Gene.

  11. Danger: Moving Mouths Ahead September 12, 2011 12:28 am

    You know how you can tell legislators are misstating, mischaracterizing, and/or outright lying about the meaning and effects of legislation?

    Yea, that’s right; their mouths are moving.

  12. Anon September 12, 2011 8:42 am

    I do have to wonder how the Office can allow any new agents/attorneys when the rules of actual use are in so much flux.

    And to put the situation on even ground, perhaps all existing agents/attorneys need to be retested once the impact of the pending law settle in…

  13. Blind Dogma September 12, 2011 10:20 am

    OT,

    Gene,

    I am aware of the advesarial relationship between you and Hal Wegner, but what have you done to the poster at Patently-O that goes by the handle of Malcolm Mooney?

    Here is a choice quote from a dialogue over the weekend at
    http://www.patentlyo.com/patent/2011/09/patents-directed-to-human-organisms.html “:

    Just for the record, let me add that Gene Quinn is a big fat dxckhxxd crybaby. His blog sxcks and so does everyone who links to his blog. I don’t see any reason to read it, ever. Dude is the biggest self-interested shill on the planet, literally and figuratively.

    Sounds like a real wackjob, but just the same, you might want to be aware of any trenchcoated furtive figures skulking behind you.

  14. Gene Quinn September 12, 2011 12:09 pm

    Thanks for letting me know BD.

    I have no idea who Malcolm Mooney is, but that it an example of the type of comment that would not be acceptable on IPWatchdog.

    The fact that I engender such hatred suggests I am doing a lot of things correct. The fact that this person feels the need to attack me personally rather than attack my positions speaks far more about him then me. The fact that Patently-O tolerates such a comments is curious. This is the type of mindless nonesense that makes intellectual dialogue on the Internet nearly impossible.

    Cheers.

    -Gene

  15. Ron Hilton September 12, 2011 12:44 pm

    If “poor man’s safety” means an unopened self-addressed postmarked letter, that was never a very good idea under first-to invent, because one had to show uninterrupted diligence in reduction to practice between the time of conception (the postmark) and the date of any prior art, and it doesnt work at all under first-to-file. A poor inventor should have a provisional filed and then use the year of pendency to get seed capital from potential investors to take the next steps toward patent protection and commercialization. A really poor but knowledgeable inventor could file the provisional pro se (by himself, without an attorney) for a nominal filing fee.

  16. EG September 12, 2011 1:19 pm

    Gene,

    Malcolm isn’t worth wasting your ink on this regard. I’ve verbally sparred with him several times on Patently-O. Sometimes he does make sense to me (I’ve made, to a certain degree, “peace” with him), but when it comes to patenting computer programs/software, his views are completely negative, to the nth degree. His profanity (and extreme views) sometimes even makes those of 6 pale by comparison. Definitely not worth losing any sleep over.

  17. Stan E. Delo September 12, 2011 2:29 pm

    Gene-
    A double thumbs up for EG’s comment, and I have no idea what makes folks like MM tick the way they do. I have run into similar attitudes in my professional career, and it is almost always caused by fear and insecurity on their part, usually when I am batting nearly 1000. The fact that he refuses to identify himself tends to call his credibilty into question as far as I am concerned, as opposed to the wisdom and knowledge exhibited by BD and SB here on a regular basis, for instance. MM seems to have no understanding of how to be civil, so is best ignored in my opinion, and thanks for refusing to tolerate his/her ilk.

    Stan~

  18. Gene Quinn September 12, 2011 4:45 pm

    Ron & Bob-

    I don’t doubt that 102(b) is intended to immunize an inventor’s disclosure, but I am very worried about how a Court will interpret 102(b)(1)(B) given that the Supremes will not look to the legislative history, which is very clear on the issue.

    For instance, picking up on Bob’s statement about what (B) says, he writes (see above too):

    “if… the subject matter disclosed [in the disclosure that the inventor is to be protected against] 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 agree that the “in the disclosure that the inventor is to be protected against” or something similar makes sense to read into what is in the bill. But if you focus just on the inventor, leaving out the joint inventor or another, here is what you get:

    “if… the subject matter disclosed [in the disclosure that the inventor is to be protected against] had, before such disclosure, been publicly disclosed by the inventor…”

    If you read “in the disclosure that the inventor is to be protected against” as being “in the inventor’s publication”, this leaves:

    “if… the subject matter disclosed in the inventor’s publication had, before such disclosure, been publicly disclosed by the inventor …”

    Exactly how can the inventor’s disclosure in their own disclosure be publicly disclosed before by the inventor? This seems to create a terrible feedback loop, which leads me to look for some way to read (B) as not having that type of nearly ridiculous redundancy.

    Thoughts?

    -Gene

  19. Gene Quinn September 12, 2011 4:48 pm

    EG-

    Thanks for your comments. I agree.

    Stan-

    I appreciate your comments as well. We sometimes disagree (publicly or in private e-mail exchanges) but I certainly appreciate that we can engage in discussion with character assassination.

    Everyone,

    Going hard at someone’s opinions and characterizing those opinions as part of a debate strikes me as fine. I appreciate that folks here don’t engage in naked character assassination and keep to the merits.

    Cheers.

    -Gene

  20. Stan E. Delo September 12, 2011 5:28 pm

    Gene-

    I think you meant to write *without* character assasination having anything to do with the discussion of the issues on their merits. Only then can opinions be considered impartially, and a humble uneducated inventor like myself for instance be heard from my somewhat admittedly strange perspective. It is not easy being an inventor, or a patent attorney for that matter, so good communication would seem to be key to making things work for us all.

    Stan~

  21. Ron Hilton September 13, 2011 12:55 am

    Gene, I don’t see a feedback loop in 102(b)(1)(B). Satisfying either (A) or (B) provides the immunity. If there is one disclosure of the subject matter, then the discloser is immune under (A). If there is more than one disclosure by different disclosers, then the first discloser is immune under (B). If there is more than one disclosure by the same discloser, then the discloser is immune under both (A) and (B). (B) does not apply if there is only one disclosure, because the same disclosure cannot have been made “before” itself. Even two identical disclosures would differ in terms of their date of publication.

  22. EG September 13, 2011 8:52 am

    Stan,

    Thanks for the kind words. Right now, we are a nation defined by our differences which is OK for politics, but not good for determining long term policy. We need to reach “common ground” (that’s my expression for it, although it’s something Speaker Boehner who is my local Congressman mentioned in reply to Obama’s speech Thursday), or our great country is going to “crash and burn.”

  23. Gene Quinn September 13, 2011 11:11 am

    Ron-

    We are going to have to agree to disagree.

    I agree that there can be exclusion under either A or B. A is very straight forward. B is a mess. I just don’t know how anyone can get around the fact that B says: “if… the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor…” That literally says if the subject matter disclosed by the inventor had been disclouse by the inventor prior to disclosure by the inventor.

    The legislative history is clear, to be sure. But the Supreme Court will not look to the Legislative History and instead will try and make sense out of the exclusion in B with just that language. I personally don’t feel comfortable relying on B as an exclusion until we have a case saying what the legislative history so clearly says.

    I have a suspicion this is just the start of problems. Things are really going to be in flux for the next 5 years.

    -Gene

  24. Ron Hilton September 13, 2011 11:59 am

    Gene, I think I understand your point. I just don’t see (B) as being logically circular (a “feedback loop”), but merely logically null in the case of a single disclosure. I would also maintain that, as problematic as (B) may be, the statute would be even worse without it. If it had been left out, then any subsequent independent disclosure by another after the original disclosure would have been prior art against the first discloser, clearly a perverse outcome. All that said, I would agree that to rely on the “grace period” is at least as inadvisable as it was under the prior statute, if not more so.

  25. Gene Quinn September 13, 2011 2:07 pm

    Ron-

    You say: “If it had been left out, then any subsequent independent disclosure by another after the original disclosure would have been prior art against the first discloser…”

    I think that is exactly what B ensures. B is so muddled that I just cannot read it to state what you say it says. What you write is so easy to understand, same as the legislative history, but that isn’t what is said.

    How can you save B when is boils down to saying: if the subject matter disclosed by the inventor had been previously disclouse by the inventor prior to disclosure by the inventor. That is a feedback look if I’ve ever seen one. How can an inventor disclose subject matter previously and prior to the disclosure of the subject matter by the inventor? Wouldn’t that make the prior previous disclosure a disclosure itself? It would seem to render B either superfluous or incapable of application.

    I’m not sure that having a subsequent non-derived publication is perverse at all. If the goal is to encourage earlier filing, which has to be the goal of first to file, then how does setting up an option to file a patent within 12 months meet that goal?

    -Gene

  26. EG September 13, 2011 2:07 pm

    BD,

    I see you’ve joined the “debate” on the Patently-O thread for Professor Shubha’s post on the AIA. Thanks for the encouragement and support relative to Malcolm.

    It’s taken me some time to develop an approach with folks like Malcolm to engage in meaningful “debate,” yet avoid getting into what my brother Mark calls a “fight with a pig in the mud.” One thing I’ve been fortunately blessed with is patience, persistence, and will power to now avoid being drawn into that “pig fight in the mud.” What I do is to challenge Malcolm on those things I can do where he expresses a view which he’s truly vulnerable on (sometimes with a “playful” or “humorous” rhetorical question) and which he looks very foolish to push. When Malcolm’s comment degenerate to “name calling” or worse yet, profanity, I know i’ve won the debate (Malcolm frequently loses his paitence and cool if you can just wait him out). When Malcolm tries to aggresively “demonize/marginalize” what I say, I REALLY know I’ve gotten to him.

    I also try to avoid getting baited into a debate that no one is going to win (or at least have any reasonable chance to convince the other side to change). Malcolm is entitled to his opinion, as am I. Once we reach the point where we’ve stated our respective viewpoints and there’s nothing else meaningful to add, it’s time to signal (as I do by saying “let’s agree to disagree” and sometimes ending with “Peace” or my Spock “Live Long and Prosper” phrase) so each side can (hopefully) “gracefully” let it go. Put differently, I tell folks like Malcolm that the choice to continue that debate is theirs, not mine.

    The only time I get really terse with Malcolm and others is when they quote/refer to what I say out of context. The context is often important, but one way the other side can try to “demonize/marginalize” what you say is by quoting/referring to it out of context (often by incomplete paraphrasing). I would certainly be labeled as a political conservative, so one of the favorite tactics of the truly “radical” (and unprincipled) liberal left (there are also those on the extreme political right who unfortunately use this approach too) is to “mariginalize, demonize, and ostracize” your viewpoint. My response is to put the debate back in the appropriate context, point out the absurdity of the “personal attack” (which is what it is), and possibly “defang” it with some appropriate rhetorical questions that frankly can’t be answered by the other side without looking foolish Iwhich isn’t what I want to happen, but sometimes is necessary to get the debate back on track and away from “personality attacks” that do no one, including the one who launches it any good).

  27. Blind Dogma September 13, 2011 2:33 pm

    EG,

    I leave the posting on Patently-O to my colleagues. The wrestling with pig analogy is especially apt there, and some absolutely love pork.

    I am trying to track down why our Kool-Aid shipments spike everytime a thread there goes over ten comments (but business is business, so I do not look too closely). I try to keep Stan in the development lab, and since the money rolls in, I figure why rock the boat?

  28. Stan E. Delo September 13, 2011 3:09 pm

    BD-
    You’re in luck, because the 2.4 million dollar boat I have working on lately just sailed off into the sunset a few days ago. http://seamarineco.com/ (Literally, to attend the Seattle Boats Afloat show!) Now that the AIA has been passed in the Senate, as soon as Obama signs it into law, kool-aid sales should skyrocket to new heights! Off to my hyperbolic paraboloid shop to play around with some Alum compounds I just acquired a few days back. Maybe it will help reduce the mudslinging a bit on some of the other blawgs.

    Cheers,
    Stan~

  29. Stan E. Delo September 13, 2011 4:05 pm

    I meant to say a “a large flagon”, of course.
    Stan~

  30. EG September 13, 2011 4:59 pm

    Stan,

    You might need several tanker car loads of that “Kool-Aid” to quench the thirst of all those “rah rahing” the AIA.

  31. Stan E. Delo September 13, 2011 5:15 pm

    Gene-

    I think your filter ate my post, so I am trying again after fixing my typo. or maybe it doesn’t like multiple links or something?
    ~~~~~~~~~~~~~~
    BTW-

    There are a few webinars in the next two days on the possible consequences of the AIA if any are interested. This is coutesy of PatentDocs and is tomorrow:
    http://www.patentdocs.org/2011/09/web-conference-on-patent-reform.html?utm_source=feedburner&utm_medium=email&utm_campaign=Feed%3A+PatentDocs+%28Patent+Docs%29

    Another one is on Thursday, from Wolf Greenfield, vis:
    http://www.wolfgreenfield.com/newsstand/414-ip-alertsenate-endorses-long-awaited-patent-reform

    I plan to have a large flagon of Jaded Jasmine kool-aide on hand for both of them.

    Cheers,
    Stan~

  32. Ron Hilton September 13, 2011 7:31 pm

    Gene, let me walk through 102(b)(1)(B) and perhaps you can see where our interpretations may differ:

    “the subject matter disclosed” – this has reference to the subject matter being disclosed, regardless of who may be disclosing it, and regardless of whether they did so independently of any other discloser.

    “had, before such disclosure, been publicly disclosed” – The way I read it, “such disclosure” refers to the aforementioned disclosure of the subject matter in question, whereas “had before been publicly disclosed” refers to a separate, earlier disclosure of the same subject matter.

    “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.” This clearly refers to the earlier disclosure, and is not the same as the aforementioned “such disclosure” of the same same subject matter that occured later in time.

    If that interpretation is correct, then if inventor 1 makes a first disclosure of the invention, followed by a second disclosure of the same invention by inventor 2, whether or not inventor 2 did so independently of inventor 1, followed by inventor 1 filing for a patent on the invention, then the disclosure by inventor 2 would not be prior art against the patent application of inventor 1.

    Without such a provision, inventor 2 could defeat inventor 1’s patent, even though inventor 1 published first, which does seem a bit perverse, even if inventor 2 developed the invention independently. And furthermore, if inventor 2 did not develop the invention independently from inventor 1, the burden of proof would be on inventor 1 to show that in a derivation proceeding, in order to take advantage of the immunity offered by 102(b)(1)(A).

  33. Stan E. Delo September 13, 2011 7:35 pm

    EG-
    Now that I finally have a little time off from my day job, I think I will go by the PT Brewery and see what they are going to do with their old smaller SS brewing flask after they replace it with a new larger one soon. Like an old wine cask, perhaps the hops patina will impart a unique flavor to future efforts to improve the palatability of the kool-aide, and render it a little smoother and more polished, to use a wine-maker’s analogy. Still struggling with how to counteract the metallic after bite of the Alum, but if I can solve that issue, things might get a bit more civil in a few places. The trick is to not tell them what the ingredients really are, outside of Extremely small lettering printed on the product when they finally get it. Some never will, of course, but that will not be MY fault, now will it? I can assure you that they reading every word of this, and it must really short their wires out a bit about not being able to comment here.

    Just send me your address MM, and I promise I will send you a Free keg of the kool-aid of your choice! But wait, there’s more! If you act now, I will send a second Free keg to whomever you choose! Why delay? Order today!
    Stan~
    stand@olypen.com

    an

  34. Stan E. Delo September 13, 2011 8:06 pm

    Ron-
    Your remarks and analysis in #33 remind of the possibility in the old system for a single inventor to create their own blocking prior art if they were not careful. In the old system, the date of the disclosure might not matter too much as long as both were within one year of each other, but that seems to be out the window when the new FITF law takes effect. Also, derivation proceedings might become a real nightmare, as unlike interference proceedings, there is no way for the later challenging inventor to compel the firat to file to let them discover Anything unless they volunteer to do so of their own free will. Probably about the same amounts of disputes, but with the huge disadvatage that the real inventor will see, the real inventors might lose in almost every case because the FITF system will reward those that have the larger wallets. University Tech Transfer offices will probably be very seriously challenged by this new legislation, as mostly they cannot afford to file 4 times as many patent applications that will mostly go abandoned in their haste. (Large sigh)

    Stan~

  35. Ron Hilton September 13, 2011 9:49 pm

    Stan, Yes, the bottom line seems to be to file earlier rather than later, which was true under the old law too. The new law just makes it worse and favors those with deep pockets even more.

  36. Stan E. Delo September 13, 2011 11:27 pm

    Ron- Fortunately I already filed my formal app at the end of July, and the next invention will hopefully be filed before this new law goes into effect. I am thinking that a formal application might be best for the next invention, as it saves a bit of expense and cuts to the chase a year earlier. Is there any good reason to file a PPA instead? The clock is seriously ticking right about now, and I really don’t want to take any chances at losing my patent rights, now that the grace period seems to arguably be mostly gone here in the US. The language of the new law seems to make it pretty clear that this is not Canada, and I don’t especially need any ugly surprises at the behest of our duly elected representatives in Washington DC.

    Stan~

  37. EG September 14, 2011 6:39 am

    Stan,

    After my latest “parlay” with Malcolm over at “Food Fights ‘R Us” Patently-O blog about why our $15 trillion in debt is a problem, he could probably use a few flagons of your vintage “Kool-Aid” right away. I may have even given him an Excedrin headache as well.

    BD,

    If you step over to Patently-O (at your own risk, mind you) under Professor Shubha’s posting, you’ll notice how Malcolm tries to again “marginalize/demonize” what I say by diversions (such as the cost of the war in Iraq which I’m not going to get into a debate with him about as I too have concerns about whether we really understood what our “exit strategy” was there, and that I’ve also bought into the alleged “lies” of the wealthy). I’ve probably “gotten under his skin” (again). If Malcolm had any sense, he would cease and desist now, but he’s too “hard core” a left wing ideologue to know when to quit. If I start seeing him spout profanity (in his own peculiar “code”), I’ll know for sure.

  38. Anon September 14, 2011 7:59 am

    The contrast between quality blogs (such as this site and PatentDocs) and “Patently-O(bnoxious)” is spectacular.

    Thanks Gene for running a tight ship.

  39. EG September 14, 2011 8:09 am

    Amen to that, anon!

  40. Stan E. Delo September 14, 2011 2:52 pm

    I just got done listening to the Foley and Lardner webinar with Bob Stoll, Hal Wegner, and Sharon Barner, which was extremely intense and packed with information about the implementation of the AIA. Bob was very sharp and well-spoken, and he pled about 4 times during the hour for paractitioners and companies and inventors to comment as soon as possible about what they would like to see implemented so that the PTO can get it right the first time. I found his attitude to be extremely refreshing, and I hardly even took a sip of my kool-aid during the event. I think they are going to archive it at F&L in the next day or two. Also Bob told of a new USPTO website to comment on and discuss the implementation of the AIA. Be there or be square, and it sounds as if this is our big chance to try to bring some sanity into things. Hal mentioned that the whole 102 A&B thing is a mashed up mess, and went on to explain exactly why. There will also be roundtables around the country very soon to gather input, which seems like a hopeful sign to me.

    Regards,
    Stan~

  41. Blind Dogma September 14, 2011 3:41 pm

    Stan,

    Do you have a link? Is there a transcript?

  42. Stan E. Delo September 14, 2011 3:42 pm

    Ron, BD, SB or any other practitioners-

    As regards my #36 comment, maybe the best way to go for my next invention might be to file a PPA including all the claims I think I can away with? Sharon and Bob both seemed to agree that claims can be amended at least one time via a CIP, and suggested that it might be the best way to keep my options open when I file my NPA. Also, it seems as if the drop dead date for keeping pending applications alive while current laws are still in effect will be in March of 2013, hence the use of CIP’s to expand the time available after then, out to possibly 10 years hence according to Hal. Let the dust settle for a few years, and then decide what to do? The courts will be much different by then, as the new USPTO venue will seem to head many court cases off at the pass before they get to courts, and Bob mentioned that they will be hiring about 100 judges for the USPTO board, if I recall what he said correctly.

    Stan~

  43. Stan E. Delo September 14, 2011 3:54 pm

    BD-
    Not yet, and it will probably be a transcript as you suggest, as there was no video. They will be mailing me links in the next little bit, and will even be snail mailing me my CLE credit voucher for being an attendee?! Maybe I should think about becoming a patent agent, as the kool-aid biz can get a bit toxic here at the lab sometimes. Maybe dash me off a note, and I will send the links as soon as I get them.

    Stan~
    stand@olypen.com

  44. EG September 14, 2011 4:01 pm

    Stan,

    What you heard from Bob Stoll is consistent with what I’ve seen of the Kappos team in general on the AIA: they’re trying to get ahead of the “tsunami” of rule making that’s about to take place once the AIA is signed into law by Obama. The Kappos team is definitely to be commended for trying to make this implementation process work as efficiently and as correctly as possible under extremely trying circumstances, including asking for input from the patent bar and public at large on how to make this implementation go more smoothly and correctly.

  45. Gene Quinn September 14, 2011 4:59 pm

    If you look at what the USPTO recently published it would seem that their understanding of 102(b)(1) is identical to what I have been saying. See (at bottom of first page):

    http://www.uspto.gov/patents/init_events/patents_items.pdf

    “the 1 yr grace period exceptions in 35 U.S.C. 102(b) (to 35 U.S.C. 102(a)) limited to disclosures by an inventor or another who obtained it from the inventor.”

    -Gene

  46. Stan E. Delo September 14, 2011 5:22 pm

    One thing that Hal mentioned today, is that the term *disclosure* is apparently new and not defined adequately in the AIA, and some other terms relating to describing who the inventor actually is have changed somewhat, hence the definitions seem to be indefinate so far. Hal seemed to think some of these types of issues might take 5 years to sort out in the courts, as you alluded to in comments #5 and 6, unless as he suggested the PTO can clarify them and send them back to Congress as Technical amendments, but good luck to them for getting that done any time soon!

    Stan~

  47. Stan E. Delo September 14, 2011 6:14 pm

    BTW-
    There will be another webinar tomorrow presented by Wolf Greenfield, but you will need to register for it ahead of time to attend. http://www.wolfgreenfield.com/newsstand/414-ip-alertsenate-endorses-long-awaited-patent-reform Just go to the bottom of the page and click on the small *here* link, and then reply to the e-mail address which will result in your getting an e-mail that will allow you to access the webinar. It will be happening at noon Eastern time.

    Stan~

  48. Ron Hilton September 14, 2011 10:51 pm

    Gene, you seem to have contradicted yourself to some extent by stating that 102(b)(1)(B) is a “mess” while also maintaining that it’s meaning is plain enough not to have to resort to the Legislative History. I think we both agree that to interpret it the way you do creates logical problems, whether a feedback loop or a no-op. That ambiguity alone would seem to be enough to cause the courts to turn ot the Legislative History to sort it out. The USPTO publication you cited is a list of open issues, not conclusive determinations.

  49. EG September 15, 2011 8:24 am

    “One thing that Hal mentioned today, is that the term ‘disclosure’ is apparently new and not defined adequately in the AIA.”

    Stan,

    Ron Katznelson who I respect much has warned on this blog about these “language landmines” which are strewn in various places in the AIA, especially Section.3. There’s also a strong suspicion that these “language landmines” were inserted by the proponents of the AIA deliberately to hopefully “blow up” at the appropriate and inopportune moment for patentees in litigation. What these “language landmines” rely upon is the statutory construction canon that if the statutory language is different, it must be interpreted anew as Congress intended a different meaning (the courts as you might guess are not always consistent on when this canon is or should be applied). Those in Congress who tried to assuage those fears by saying “but we say otherwise in the legislative history” just don’t understand how some judges (and especially Justice Scalia) work in viewing the legislative history/intent as “irrelevant.”

  50. Stan E. Delo September 15, 2011 5:02 pm

    The Wolf Greenfield presentation was very good, and went into some detail about what will be changing and when. Practitioners especially might do well to have a listen if they get a chance. Some strategies for coping with the new laws were suggested, from what they know so far.
    http://event.on24.com/eventRegistration/EventLobbyServlet?target=lobby.jsp&eventid=356193&sessionid=1&key=E14F988DF919F63A8926AE9E55394CBB&eventuserid=54173024 They specifically mentioned the new language about *disclosure* in 102 B if I recall it correctly and what it might or might not mean.

    Stan~

  51. Stan E. Delo September 15, 2011 5:11 pm

    I looked up the Foley and Lardner webinar from yesterday, which is an audio presentation with a slide show. http://www.foley.com/multimedia/multimedia_detail.aspx?multimediaid=79524924

    A Lot of territory was covered very quickly in the hour available.

    Stan~

  52. Gene Quinn September 15, 2011 6:37 pm

    Ron-

    To the contrary. The way you interpret 102(b)(1)(B) causes the problems. The way I interpret it the meaning is clear and completely consistent with the plain text. To get it to mean what you say introduces near ridiculous logic that is circular. 

    I will also point out again that my interpretation is consistent with what the Patent Office says. John White also agrees with me, as do others. 

    Time will tell and I have every confidence I will be proven correct. Advise your clients carefully or I think you will be sorry. 

    -Gene

  53. Andrew September 15, 2011 7:58 pm

    Gene, you wrote:

    “I just don’t know how anyone can get around the fact that B says: “if… the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor…” That literally says if the subject matter disclosed *by the inventor* had been disclouse by the inventor prior to disclosure by the inventor.”

    If you compare your quoted section from the act with what you said it “literally” says I think it’s clear that you have added non-existent language “by the inventor”. I think that it is causing the problem in your interpretation.

    Andrew

  54. Gene Quinn September 15, 2011 10:20 pm

    Andrew-

    The trouble is folks who are ignoring that 102(b)(1)(B) relates to “subject matter” not just the disclosure that same term is used later and relates to information derived from the inventor. Look at how that term is used twice.

    Also, interpreted as you all are saying violates 112 because the inventor would be given preemptive right to claim the subject matter as their own ( I.e. It is prior art) even if the particulars come from a subsequent disclosed. That is ridiculous.

    Will post on this in the coming days. In the meantime it is telling that the PTO characterizes the two “exceptions” consistent with my interpretation. You can say it is just a list of issues, but they leave off something as important as an optionto file a patent? Unlikely.

  55. Gene Quinn September 16, 2011 10:48 am

    Just to follow up my comment from last night, which was typed on my iPhone…

    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.” (emphasis added)

    It seems to me that “the subject matter disclosed,” which is used twice, has to be referring to the same thing. So as you read (B) to the end it seems quite clear to me that the subject matter that is the core of the (B) exception has to be subject matter that was disclosed directly or indirectly from the inventor or a joint inventor.

    (A) relates to the disclosure specifically. (B) is broader and relates to the subject matter. To read (B) as protecting the inventor against subsequent publications would be to award the inventor rights to after disclosed but not identical improvements. If the inventor disclosed a coffee cup, then another discloses a coffee cup with a lid, the second disclosure would relate to the same subject matter but not to the disclosure. So under the reading that is consistent with the legislative history the coffee cup with the lid would not be prior art for the inventor, who could then file a patent application that would capture that subject matter, which seems absurd.

    It is also noteworthy that in the document of issues where the USPTO is asking for comment they do not ask for comment on subsequent disclosures not being prior art, but rather say that the “exceptions” (notice the plural) relate to the inventors own disclosures or disclosures derived from the inventor. There are only 2 exceptions under (b).

    -Gene

  56. Andrew September 16, 2011 11:20 am

    It still seems clear to me that as long as an inventor discloses something first, that inventor is safe for up to one year to claim the disclosed subject matter:

    A disclosure made 1 year or less … shall not be prior art to the claimed invention if –
    (A) the disclosure was made by the inventor [i.e., self disclosure can’t hurt you]
    (B) the subject matter disclosed had [already] been disclosed by the inventor [ie., as long as you disclose first, you win]

    Andrew

  57. Gene Quinn September 16, 2011 1:34 pm

    Andrew-

    I’m glad that is clear to you. Of course, it is not clear to others, including the Patent Office who will be making the first determinations.

    You cling to your interpretation at your own risk. I will only point out that to get (B) to mean what you say you can’t read the entire subpart, because if you do it is pretty clear that my reading is correct.

    If you are a practitioner just make sure your malpractice policy is current when you start advising clients that if they publish they are good for 1 year. Aside from not being able to know whether they actually did publish first there is a high likelihood that your reading is incorrect and clients will forever be estopped from obtaining a patent by following your advice.

    -Gene

  58. Ron Hilton September 16, 2011 2:20 pm

    As far as advising a client, my advice has always been DO NOT rely on the grace period, and under this new law that advice woudl become even more emphatic. The problem is when the client comes to you after having already made a public disclosure less than a year ago. You can either advise them to file or not to file. If you advise them to file, the worst that can happen is they waste time and money on an application that will not be granted. If you advise them not to file, the worst than can happen is that they lose all exclusive rights to their invention. From a malpractice standpoint, I would rather risk the former than the latter, if there is any doubt whatsoever. And that fact that reasonable people can differ so markedly on the correct interpretation of the new statute, tells me there is probably some doubt and so I would err on the safer side of advising the client to file.

  59. Stan E. Delo September 16, 2011 2:52 pm

    Ron-
    Very well said in my opinion. For instance if the client files an application and fails to get a patent allowed, they would only be out of pocket $10 or 20K and some of their time, but if they lost their patent rights by not filing in a timely manner, it could conceivably cost them millions in lost profits that their invention might have made for them. Inventors need understand the odds after listening to competent counsel, and roll the dice in an informed manner. Caveat emptor.

    Part of the problem might be that the way the legislation is written, the term disclosure is used in contradictory manners in different sections, concerning what constitutes a bar, be it public use, offer to sell, publication, and several other actions that don’t spring to mind right now. The PTO now has to try to make some sense out of the legislative mess, hence suggestions that they might need to submit a Technical amendment to Congress to try to make some sense out of the language. I tend to think that Congress might not get to it for years, so we might have to wait for some painful for somebody court cases to try to clear things up, which might take upwards of 5 years as Gene and others have aptly pointed out, and they might even muck things up further with ill-informed decisions.

    Stan~

  60. Anon September 16, 2011 4:21 pm

    It still seems clear to me that as long as an inventor discloses something first, that inventor is safe for up to one year to claim the disclosed subject matter:

    I do not think so – not for independent inventions.

    Sometimes there are gems to be found on that other blog. Robert Hover and lower case “anon” have an interesting hypothetical construction and dialogue that may help shed some illumination.

    Hover:

    The construction of the grace period is as follows:

    A covers the scenario when the cited reference was a disclosure by the PRESENT inventor, a PRESENT joint inventor, or a third-party who learned of the invention from one of the PRESENT inventors.

    B covers the scenario when the cited reference was a disclosure by a DIFFERENT inventor, DIFFERENT joint inventor, or third party who learned of the invention from one of the DIFFERENT inventors. If the DIFFERENT inventors’ public disclosure is antedated by a subsection A exception for the PRESENT inventor, then subsection B kicks in and the cited reference cannot be used.

    For example:

    Inventor Joe tells Bob about his new invention, Widget, and Bob writes an article about it in his local newspaper. Bob’s article is a subsection A exception for Joe.

    Simultaneously, Inventor Jim idependently invents the same Widget. About a month after Bob’s article is published, Jim tells Amelia about Widget. She writes an article in her local newspaper about 3 months after Bob’s article was published. Amelia’s article is a subsection B exception for Joe.

    Thereby, the sections are not redundant, and the underlying principle of first to file is maintained.

    anon


    In your example, Joe has not filed prior to Amelia’s article. Also, Jim has independently invented the same Widget, so even though Jim has done so AFTER the publication by Bob, Jim’s invention is not directly OR INDIRECTLY obtained from Joe.

    Amelias’s article is NOT a subsection B exception for Joe. Joe IS BARRED from recieving a patent (unless he can actually prove – without, I believe, the aid of discovery – that Jim in fact did NOT independently invent the same Widget).

    First to File may be maintained, but the fallacy of the GRACE PERIOD BEING MAINTAINED should be more carefully scrutinized.

    Robert Hover

    anon, you are incorrect:

    102(b)(1)(B) provides that: the subject matter disclosed (i.e. the cited reference that “shall not be prior art”) had, BEFORE SUCH DISCLOSURE, been publicly disclosed by the inventor. . .

    Therefore, regardless of when Jim invented, so long as Joe files within 1 year of Bob’s article he will not be barred. Again, so long as Joe files within 1 year of Bob’s article, Bob’s article will be a (b)(1)(A) exception and Amelia’s will be a (b)(1)(B) exception.

    Again, this is because Bob’s article, knowledge for which was derived from Joe, was published BEFORE Amelia’s article, knowledge for which was derived from Jim.

    anon

    “Amelia’s article, knowledge for which was derived from Jim.”

    While true, your statement is immaterial.

    The reason for the flaw: the exception in (b)(1)(B) ends in “publicly disclosed by… another WHO OBTAINED THE SUBJECT MATTER disclosed (this refers to the original subject matter disclosure of Joe’s by Bob) DIRECTLY OR INDIRECTLY from the inventor (this refers to the inventor seeking the protection, that would be Joe, not Jim).

    The (b)(1)(B) exception does not apply (for Joe’s benefit) to the INDEPENDENT disclosure of Jim’s, for Joe’s subsequent actual application, as the subject matter of Amelia’s article was not obtained directly or indirectly from Joe.

    Jim’s INDEPENDENT status is key to barring a later filing by Joe, because:

    the (b)(1)(B) exception ONLY applies to secondary disclosure (here by Jim) of the subject matter that is actually initially disclosed (here by Joe) if the subject matter of the secondary disclosure (here by Jim) if that matter is OBTAINED directly or indirectly (Jim obtains from Joe).

    Publication of Joe’s work by Joe’s agent and publication of Jim’s work by Jim’s agent do not have the necessary nexus of direct or indirect obtainment for the (b)(1)(B) exception to apply. There must be that nexus in addition to the timing factors.

    The statutory reading is a bit difficult as the word “disclosed” in line 8 appears directly before “directly or indirectly” but does not relate to those words. Rather, the word “disclosed” refers to the words “the subject matter.”

    The words “directly or indirectly” related to the words “who obtained,” even though those words are split by the phrase “the subject matter disclosed.”

  61. Michael G Smith September 16, 2011 4:32 pm

    Gene,

    I am confused by your position, but I like the use of your hypothetical in item 55 to promote the discussion.

    You wrote:
    To read (B) as protecting the inventor against subsequent publications would be to award the inventor rights to after disclosed but not identical improvements. If the inventor disclosed a coffee cup, then another discloses a coffee cup with a lid, the second disclosure would relate to the same subject matter but not to the disclosure. So under the reading that is consistent with the legislative history the coffee cup with the lid would not be prior art for the inventor, who could then file a patent application that would capture that subject matter, which seems absurd.

    In your hypo, applicant discloses a coffee cup (D1), third party discloses a coffee cup plus lid (D2), and then within 12 months of D1 publication, applicant files an application for a patent. I agree that it would be wrong if D1 were to provide protection against the prior art-effect of the later disclosure (D2) of ‘coffee cup plus lid’ because that is more than what D1 disclosed. However in my view, the statute protects applicant from the ‘coffee cup’ in D2 acting as prior art, almost like a provisional application would–surely publication D1 cannot be viewed as having a broader effect than a provisional application, which would not establish priority for the ‘plus lid’? The ‘plus lid’ aspect of D2 seems to be ‘new matter’ relative to the coffee cup in D1, and the applicant cannot expect his ‘coffee cup’ disclosure to establish priority for or protect against the disclosure of the ‘plus lid’ in D2.

    You seem to say that D1 protects the applicant from an intervening reference that discloses “after disclosed but not identical improvement.” In my view, it protects the applicant ONLY from what it actually discloses. I I think that is consistent with the statute and the legislative history: if applicant claims ‘plus lid’, D2 would be prior art, but if he claims only the coffee cup he disclosed in D1, then D2 should not be prior art. The lid in your hypo would be like “new matter”, not protected by D1 and patentable only to the author of D2 (though D1 would be citable against his application for obviousness). I do NOT read the term ‘subject matter disclosed’ to encompass anything that was not Actually Disclosed in D1.

    MikeS

  62. Andrew September 16, 2011 4:34 pm

    >It seems to me that “the subject matter disclosed,” which is used twice, has to be referring to the same
    >thing. So as you read (B) to the end it seems quite clear to me that the subject matter that is the core of
    >the (B) exception has to be subject matter that was disclosed directly or indirectly from the inventor or a
    >joint inventor.

    I agree that “the subject matter disclosed” refers to the same thing – the subject matter disclosed. However, this does not mean that all “disclosures” of said subject matter must be by the inventor.

    For example, I believe the wording of the new law allows this to happen, in chronological order:

    1. I invent something (subject matter)
    2. I announce it via my website (a disclosure – made directly by me the inventor)
    3. I also tell a reporter and the reporter writes a story about it in a newspaper (a disclosure – obtained from me indirectly)
    4. People read the newspaper and blog about it (more disclosures – obtained from me indirectly)
    5. Somebody in Japan independently invents the same subject matter and makes an announcement on his website (a disclosure – neither directly by me nor from someone who obtained it indirectly from me)
    6. I file a patent application within 1 year of my original website disclosure.

    In this case, the disclosures at steps 2, 3, 4 are not prior art to me due to the (A) exception. And the disclosure at step 5 is not prior art to me due to the (B) exception.

  63. Michael G Smith September 16, 2011 4:43 pm

    I believe I agree with Andrew (item 62), with the caveat that I think D3, D4 and D5 ARE prior art against anything in the patent application that is not Actually Disclosed in D2.

    MikeS

  64. Gene Quinn September 16, 2011 5:25 pm

    Andrew-

    We agree except with respect to D5. That would be prior art against you. The subject matter of a subsequent disclosure is only excepted out if it was “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.” That is what (B) says. So in order for (B) to apply the subject matter of the subsequent disclosure would still have to come from the inventor, either directly or indirectly. (B) does not cover the subsequent independent inventor, although the Legislative History says otherwise. The specific language of (B) requires that the subsequent disclosure be from or by the inventor.

    Focus on the fact that “subject matter disclosed” in the first part is identical to “subject matter disclosed” at the end of (B). If you read (B) all the way through your D5 is not covered in the exception.

    -Gene

  65. Anon September 16, 2011 5:48 pm

    although the Legislative History says otherwise.

    Gene, do you have a cite for this?

  66. Andrew September 16, 2011 5:57 pm

    MikeS,

    My understanding is that D3 and D4 will not be prior art against the patent application because they came directly/indirectly from the inventor so exception (A) continues to apply (assuming of course that the people writing the newspaper article and blogs did not themselves invent further enhancements).

    However, if D5 (from somebody totally unrelated to the inventor) discloses subject matter not previously disclosed in any of D2, D3, and D4, then, yes, it would be prior art against the patent application.

    Agree?

  67. Michael G Smith September 16, 2011 5:59 pm

    Gene,

    I read (b)(1)(B) to say the publication D2 in Andrew’s hypo above provides immunity against D5. D5 is a “disclosure made 1 year or less before the effective filing date” of D6. The disclosures in D5 are excluded from being prior art because the subject matter of that disclosure “had, before [D5], been publicly disclosed by the inventor…” in D2.

    Had D5 been a patent application instead of a disclosure, D5 would be first filed. Then I read the statute to say the applicant in D5 would be entitled to a patent unless the author of D2 could show derivation under exception (b)(2)(A).

    MS

  68. Michael G Smith September 16, 2011 6:02 pm

    Andrew,

    As long as D3 and D4 say the ‘same thing’ as D2, they would not become prior art. If a commentator in the blogs of D4 said it would be nice if the coffee cup were insulated, that might extend beyond the disclosure D2 and become prior art. That is my interpretation, anyway.

    MikeS

  69. Andrew September 16, 2011 6:09 pm

    >Had D5 been a patent application instead of a disclosure, D5 would be first filed. Then I read the
    >statute to say the applicant in D5 would be entitled to a patent unless the author of D2 could
    >show derivation under exception (b)(2)(A).

    MikeS: If D5 were a patent application, I read the statute to say that D2, D3, D4 would all be prior art to the Japanese inventor’s patent application and therefore he would not be given the patent due to prior art rejections. However, me (the example inventor in the above hypo) would have no prior art cited against me (due to the exceptions) and would be issued the patent (assuming no other art exists). So I’m still okay even if the Japanese guy files before me as long as I disclosed first.

  70. Michael G Smith September 16, 2011 6:40 pm

    Good point, Andrew, I stand corrected: the disclosures D2-D4 would all be prior art against D5 based on the order you described in your hypo, I believe. You should be able to show that your publication D2 protects your later-filed application D6 from D3-D4 under the exception in (b)(1)(B), if I read it correctly. D5 is an application in our current hypo, so D5 is prior art under 102(a)(2) rather than (a)(1), and it could be overcome under the exception in (b)(2)(B) based on your disclosure D2, even if it were independently invented.

    MikeS

  71. Stan E. Delo September 16, 2011 6:40 pm

    Andrew-
    A potential flaw in your reasoning might be that what constitutes a Disclosure is not at all clear right about now. Will Universities be exempt because they choose to publish before they perish? There are some carve-outs in that regard in this legislation, that are fairly clearly defined, but the 900 poubd Gorilla in the room is what is meant by disclosure in their case. Universities and how their funding was attained is mostly still up in the air right about now, although there is some language in the legislation that hints at what they meant to happen. Mostly having to do with whether or not any research was federally or privately financed, and how for profit spinoff development will be treated in the near future. Mostly good news for Tech Transfer offices, but perhaps bad news for the potential for profit entities that are trying to take the University ball and run with it. Hence TTO.s might be hindered in some senses.

    Fascinating discussion, which could probably never happen anywhere else in the world that I am aware of.

    Regards,
    Stan~

  72. Andrew September 16, 2011 6:48 pm

    Stan, yes I agree. What constitutes a “disclosure” sufficient to secure your right to use the exceptions for all subsequent disclosures is a good question.

  73. Ron Hilton September 17, 2011 3:17 am

    Gene, I think I am getting a clearer understanding of your interpretation of 102(b)(1). I agree that the three references to “the subject matter disclosed” all refer to the same subject matter. Where I disagree is that they all must necessarily refer to the same disclosure by the same inventor (where I use the term “inventor” in the expanded sense of “the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor”). Specifically, only two of the three references are explicitly attributed to the inventor, while the first reference in 102(b)(1)(B) is not. Your interpretation is that it is implicitly so, but that is where we must agree to disagree. BTW, I have raised this issue on the NAPP forum, and so far there has been unanimous agreement that 102(b)(1)(B) provides some measure of protection against a disclosure by a third party other than the “inventor.”

  74. Anon September 17, 2011 11:29 am

    Ron,

    Do you have a link to the NAPP forums? I searched online and only came up with photoshop-related links (and one link that lambasted those NAPP forums related to the photoshop-related links).

    The language in the new 102(b)(1)(B) section is indeed intricate.

    I am very interested in how the discussion on the language unwinds both here and on the “other blog,” especially surrounding the apparent (but highly unrecognized) limitation of the (b)(1)(B) exception to only that prior art that is not independently invented. The phrase “subject matter obtained… directly or indirectly” simply does not cover obtainment through independent creation.

    It seems that all a second party has to do to defeat the first party reliance on 102(b)(1)(B) is to provide the Office with a statement that the second party’s disclosure of the same matter was simply independently created. Since indpendent creation is not covered by either direct obtainment nor indirect obtainment, the entire provision simply becomes inapplicable.

    That such a second party interaction with the Office during the examination phase is a subtle but earth-shattering sea change of philosophy that seems to be riding low in the blogosphere.

    My advice (with a caveat): let secrecy reign. The option to go the non-publication route still exists. By going the non-publication route, any third-party interactions can be minimized, and the 102(b)(1)(B) defeating assertions can be minimized.

    Now the caveat: My colleagues and I are still working through whether this avenue suffices given the broad post-grant ability to bring non-traditional arguments to bear. Even following the non-publication route may not be enough to ensure a protection against independent creation arguments post first disclosure, but pre-actual filings.

    The safest bet may be the compete opposite of the intentions of the legislation: a complete clamping down on any publication prior to an actual filing of a patent application.

  75. Ron Hilton September 17, 2011 1:29 pm

    Here is the url for NAPP’s home page: http://www.napp.org/
    It is a great organization for patent practitioners. I agree that showing that the subject matter was “obtained directly or indirectly” relies on the cooperation of the second party with the inventor(s). Someone not so cooperative becomes a third party whose “such disclosure” may be covered by 102(b)(1)(B) depending on how it is interpreted.