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October 11, 2011

Comments

Kevin -

Regarding petition for Derivation: "Any such petition may only be filed within 1 year after the first publication of a claim to an invention that is the same or substantially the same as the earlier application's claim to the invention..."

Does "publication of a claim" refer only to an 18 month publication or issued patent, or could it be any publication that shows the features of the invention that are claimed?

Even if it is only the former, a "true inventor" would have to spot the publication and then petition for a Derivation within a year, whether or not the offending patent had issued or the "true inventor" had even filed for a patent yet. This is an amazingly excessive burden on the "true inventor."

If "publication of a claim" refers to any publication of the features described in the claim, the burden is beyond unworkable.

- Randy Landreneau

The statement:

Thus, this new provision provides that the "true" inventor's public disclosure "immunizes" the inventor from disclosure by another, presumably provided that the "true" inventor files a patent application within one year of his or her initial disclosure (i.e., within the grace period).

is not quite accurate. The term "immunizes" implies that a first disclosure (not a patent application) protects the inventor from any 3rd party disclosure during the intervening year suggesting that a disclosure is equivalent to a provisional application. This is not the case. 3rd party publications that are not "derivations" published during the intervening year can be effective prior art.

Kevin -

Further to my previous comment -- the following is not correct:

the effect of earlier disclosure is to eliminate as prior art any disclosure or patent or patent application that occurs after the first public disclosure by the inventor,

You are only shielded from your own disclosures or derivations thereof. Independently obtained disclosures are effective prior art against your subsequent filing even if published during your grace period

This seems to be widely misunderstood.

Kevin - I stand corrected -- seems the "or" between 102(b)(1)(a) and (b) changes everything. Hard to believe this will not later be corrected.

Dear Tom:

Thanks for the comments. They illustrate the dangers of having patent laws written by Congressional staffers, particularly in comparison to the law as written by Judge Rich. I agree that as the inconsistencies become evident Congress will need to pass clarifying amendments (as they did with the AIPA 12 years ago).

Dear Randy:

Agreed that the burden is high, and higher on a sole inventor or university. As with much of the law, it seems to have been written for the benefit of companies that had the economic wherewithal to monitor extensively, or to pay outside counsel to do so on their behalf.

Thanks for the comment.

Tom you state:
seems the "or" between 102(b)(1)(a) and (b) changes everything.

You are closer with your first thoughts (I fear).

102(b)(1)(a) and 102(b)(1)(b) may have an "or" between them, but the subjects of the two clauses are different. Of course this means that the two clauses cannot be merely conjunctive.

I am not sure ANYONE can fully know what the law as written actually means.

I have been on the fence too whether or not the congressional record matters. I believe it matters for ambiguity, but not for vagueness. In fact, some even state that as written, the new law is not even vague - just not what most believe it to say. In that case, the congressional record is not even admissable.

I am still waiting for more debates to help sway me.

Thanks Kevin for your continued coverage.

But does anyone else feel that the "sense of congress" fails to pass the sniff test?

"Finally, Sections 3(o) and 3(p) express the "Sense of the Congress"...

"promote harmonization of the U.S. patent system with patent systems" in the rest of the world and

"promote greater national uniformity and certainty" in patenting."


I am not sure how the odd (and definitely still very different from ROW) systems will promote harmonization, let alone whether harmonization for its own sake is even a goal worth pursuing.

Since patents are a federal issue, the greater national uniformity statement is utter nonsense. This type of "motherhood and apple pie" should be a red flag that smoke is being blown.

And as has been noted across the patent lanscape, the only "certainty" from this new law is that uncertainty will reign for the foreseeable future.

Kevin, I wonder if you could help me clarify something? You said, "This section of the new statute also expands the scope of foreign-filed applications as prior art: instead of being limited as prior art to their filing date (or, in the case of a PCT application, the International Filing Date) the new law gives foreign patents and applications the benefit of their earliest effective filing date, which would be the foreign filing date for such applications." I think you are referencing 102(d)(2) here? If you cross reference "the patent or application for patent" language from 102(d) back to 102(a)(2), it must be a patent issued under section 151, or an application deemed published under section 122(b)--both of which are US patents/applications. Doesn't this mean that foreign applications only get the benefit of their effective filing date if there is a later US patent/application in the chain?

Kevin -

Thanks for answer, but what about the other part:

Does "publication of a claim" refer only to an 18 month publication or issued patent, or could it be any publication that shows the features of the invention that are claimed?

Do you know the answer to this or will it be up to future court action or other interpretation?

- Randy Landreneau

Kevin -

Regarding "Any such petition (for derivation) may only be filed within 1 year after the first publication of a claim to an invention that is the same or substantially the same as the earlier application's claim to the invention..."

If the "deriver" files and opts out of the 18 month publication, and the inventor files soon after and does not opt out, the first publication of a claim will be the inventor's 18 month publication. By the time the "deriver's" patent issues, it could already be too late to petition for a derivation.

Am I totally off on this, or is this a correct interpretation?

Randy Landreneau

Sorry I've been AWOL - JDRF Century Ride in Death Valley - very hot there.

In inverse order:

Randy: I think the statute will be interpreted so that whenever "true inventor" A becomes aware of deriver B's patent, she must file a derivation action within 1 year of publication (patent or application). So while your scenario is not outside the literal words of the statute, I don't think a reviewing court would ignore the statute's purpose and deny the action under the circumstances you postulate.

Thanks for the hypo.

Dear Randy:

I think the statute must refer to a patent publication, because mere "publication" of the invention by another does not implicate the derivation provisions of the new law (just the novelty provisions and whether the "true" inventor has either filed OR has her own publication that started the 1-year grace period.

Thanks for the comment.

Dear Vanessa:

I think the law has always been that a foreign-filed patent application has effect as prior art either 1) upon its publication under "old" section 102(a) or 102(b), or 2) as part of a priority chain to a US or PCT application (under "old" section 102(e)).

The new statute does require a "US" filing, as did prior law (e.g., a published PCT application got the benefit of the International filing date only if it was published in English and designated the US). The difference now is that the foreign priority date becomes the earliest effective filing date for determining who was the "first inventor to file."

But you raise an interesting question with regard to a PCT application that does not ultimately result in a US national phase filing - while such an application stemming from a US provisional application can be expected to have a preclusive effect, I need to think about what would happen if the priority document was merely a foreign-filed application. I am inclined to think that since Sections 365(a), (b), and (c) merely establish the right to file a US application (not a requirement), a PCT designating the US would still be enough for the foreign priority date to the the first "effective filing date" and thus for the PCT application to be prior art as of the filing date of the foreign-filed priority application. But I can see arguments to the contrary.


Thanks for the hypo.


Kevin,
I am not sure what you mean in your response to Vanessa's comment here:
"I think the law has always been that a foreign-filed patent application has effect as prior art either 1) upon its publication under "old" section 102(a) or 102(b), or 2) as part of a priority chain to a US or PCT application (under "old" section 102(e))."

Under 102(e) only a U.S. patent or U.S. patent application publication can constitute prior art. In re Hilmer does not allow a foreign priority date for a rejection. Of course, AIA will abolish this.

What I am wondering is if a rejection is made under AIA based on a U.S. patent that claims priority to a foreign application, how does the Examiner know that all of the subject matter in the U.S. patent is actually in the foreign priority document? Many foreign applicants file additional embodiments in their U.S. applications.

Dear Confused:

No, actually a PCT application published in English that designated the US was prior art on its publication date as of its International Fiiing Date under (old) 102(e).

You are correct that In re Hilmer precluded a US application having a foreign priority document from asserting the foreign filing date under 102(e). However, my point is that the "effective filing date" language in the AIA means that a qualifying US or PCT application has a prior art effect under the new law that arises upon publication of the US application or publication of a PCT application designating the US.

I think. Thanks for the comment.

Kevin,

No? Didn't I say "a U.S. patent application publication". I think you mean "YES, but to be more specific..."

Also, didn't you say in your response to Vanessa, "part of a priority chain to a US or PCT application (under "old" section 102(e))"? In which I respond, NO.

My point, again, is that priority plays no role in 102(e). A priority document has no impact on the prior art effect of a U.S. patent or U.S. patent application publication (of course provided that a U.S. patent application publication that is a national of a PCT application be published in English).

I think you are right with what you mention in your last paragraph, but I have read some materials that state that AIA "gives prior art effect to foreign references" without the U.S. distinction. I am not sure if these materials are overlooking the "patent.. 151" or "publication 122b" language in AIA 102(b) or if they really do think that any foreign reference constitutes prior art as of its filing date. Be careful of what is being published out there, apart from the actual text of the AIA itself.

Kevin,

I have another question, which arises from your above coverage of AIA.

You state above: "New § 102(b)(1)(A) establishes the one-year grace period for the inventor's own disclosure or disclosure by another who derived the invention ("obtained directly or indirectly") from the "true" inventor."

My question is how did you conclude that derived from means "obtained directly or indirectly from"?

Is it possible Congress meant different meanings attach to "derived from" and "obtained directly or indirectly from"?

Dear Confused:

102(b)(1)(A) uses the "obtained directly of indirectly" language. The amendment to 291 says "derived from." While it is possible Congress meant something different, I doubt there is any legislative history, and think it is merely another example of sloppy drafting (which seems to be rampant in this Act). I know of no other grounds for bringing a derivation action - but implied in your question is whether "true" inventor A has a cause of action if "deriver" B files an application on the combination of "X+Y" after learning of "X" from inventor A.

Answer: don't know. May depend on whether "X+Y" is independently patentable.

Something to keep the CAFC busy for another 20-40 years.

Thanks for the comment.

question is whether "true" inventor A has a cause of action if "deriver" B files an application on the combination of "X+Y" after learning of "X" from inventor A.

Every day another ambiguity in the AIA. Perhaps a carve-out for invention Y?

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