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« Court Report - Part II | Main | Reaction to Manager's Amendment to House Patent Reform Bill »

April 12, 2011

Comments

on (p) (2) (A) I think you mean "annual," not "animal."

Kevin,

The fact that Congress can't even write the "grace period" language in a logical and sensible manner is just another reason why I shudder at this oxymoronic "America Invents Acts." Our clients aren't going to be happy with how fouled up and misguided this legislation is.

"Presumably, changing the language to exclude "public use" and "on sale" from the statute and retain "or otherwise disclosed to the public" excludes such activities from the definition of disclosure."

I was going to say the opposite. Why would they take out offers for sale and public use from being prior art?

6: Besides the fact that traditionally an inventor has had a one-year grace period that permitted public use and sale, the reasoning was that an inventor should be able to test the invention in the marketplace before spending the money to patent - with the idea that if the inventor did test it in the marketplace and didn't patent the invention would fall into the public domain. Not sure there is a good reason not to keep those exceptions.

"6: Besides the fact that traditionally an inventor has had a one-year grace period that permitted public use and sale, the reasoning was that an inventor should be able to test the invention in the marketplace before spending the money to patent - with the idea that if the inventor did test it in the marketplace and didn't patent the invention would fall into the public domain. Not sure there is a good reason not to keep those exceptions."

Well I can see taking out the applicant's own offers for sale or public use, but this seems to take everyone's offers for sale or public use out of the prior art pool. For instance, MS offering word for sale should, if it is prior to i4i filing for a patent, block i4i from filing for their patent (that apparently covers word).

Right?

We don't want to take all offers for sale or public uses out of the prior art pool, just the ones by applicant right? Is there some other section that would cover that or something that I'm forgetting?

With regard to offers for sale, there's a certain logic in saying I can't get a patent on something if I've offered it for sale, even if what I disclose in making that offer doesn't constitute an enabling disclosure. That's a sort of equitable estoppel, a variation on Metallizing Engineering - I make the offer to gain a commericial advantage, so I should be considered as having disclosed the invention even if I didn't (if my offer was made more than a year before I filed my patent application).

But I've never understood why a third party's offer for sale of something that may or may not be what I invented, when there's no proof that that third party's offer constitutes an enabling disclosure, should bar me from obtaining a patent - the equitable component isn't at work there.

You'd think that if they're going to tinker with 102, they'd fix this mistake in the case law, but as EG points out, expecting Congress to get things right seems to be too much. (As if proof were needed, over at PatentlyO, Ted Schimelman pointed ut that Senator Hatch - who in the past has had an interest in patent legislation - thinks the Senate version of the bill maintains the grace period.)

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