text:
Published Applications as Prior Art
July 28, 2009 Academic Studies, Articles and Publications, PatentDennis Crouch
[edited to fix my pre-coffee typos where my eyes though provisional = published]
In 2001, the USPTO published its first patent application. Since then, almost two-million patent applications have published. During this same time period, about 1.3 million patents issued. There are a couple of ways that the prior art created by patent applications change the prosecution game. First, published applications increase the sheer volume of prior art. Most notably, around ten percent of the published applications will never issue and would not have been otherwise published. And, even if published elsewhere at a later date, applicants would be faced with the later 102(a) effective date rather than the 102(e) effective date associated with a published application. This ties in with the second importance of published patent applications — they bring innovations to light more quickly and in a manner that patent examiners can readily use. Along these lines, the early publication of published applications triggers the clock for the statutory bar of 102(b).
Looking at patents issued during the past four years, I calculated the average percent of cited references that are US published patent applications. As you might expect, that figure has been rising steadily – doubling from under 6% in 2006 to almost 12% for patents issued in the early part of 2009. The evidence shows that examiners are using the patent applications. On their own examiner's locate 41% of all cited US patent application publications even while locating only 25% of other cited references. (The remaining references are submitted by the applicant).
Note, this post was prompted by an interesting series of comments on IPWatchdog questioning whether this newly available prior art has been a factor in the dropping allowance rate.
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96 thoughts on "Published Applications as Prior Art"
"Portions of the patent application which were canceled are not part of the patent or application publication and thus cannot be relied on in a 35 U.S.C. 102(e) rejection over the issued patent or application publication. Ex parte
Stalego, 154 USPQ 52 (Bd. App. 1966)."
I found this to be a very intersting quote from the MPEP. It is a clear example of a policy change based on propagation of a new law. Specifically, 102(e) did not account for "application publication" before AIPA-1999, so how can the MPEP say this policy is based on a Board decision from 1966? The answer is… regardless of whether the publication is a patent or "application publication," the underlying fact pattern of the 1966 case could be modified to substitute "application publication" in place of "patent" and the resulting legal conclusion would be exactly the same.
Steve: "What is the law here? If the patent had not been abandoned, then the priority date would have been the filing date, of course. But the way I read the MPEP, the priority date of an abandoned application (with no children) looks as if it is the publication date rather than the filing date. Can anyone cite some definitive answer here?"
Just looking at 102(e):
"(e) the invention was described in — (1) an application for patent, published under
section 122(b), by another filed in the United States before the invention by the applicant
for patent or (2) a patent granted on an application for patent by another filed in the
United States before the invention by the applicant for patent, except that an
international application filed under the treaty defined in section 351(a) shall have the
effects for the purposes of this subsection of an application filed in the United States
only if the international application designated the United States and was published
under Article 21(2) of such treaty in the English language;"
the pertinent part being:
"application … published under
for patent"
Whether the application was ultimately abandoned is irrelevant. Only the fact that it published is relevant, along with the application filing date which is before the invention by the applicant.
Not sure what part of the MPEP you were reading, but you might have been confusing cancelled matter in an application. In that case, the cancelled matter is art as of the publication date only, and not the filing date. "Portions of the patent application which were canceled are
not part of the patent or application publication and thus cannot be relied on in a 35
U.S.C. 102(e) rejection over the issued patent or application publication. Ex parte
Thanks Babel. I had seen the words "Dred Scott" before, without having any idea what they connoted. What people did a long time ago is one thing. What they choose to do today, in more enlightened times when more is expected of them, is quite another. Just as you say.
Babel Boy says:
Max and 6, seems that you are standing on common ground, ideologically. You are not alone.
It's the denigration of American ideals — embodied in the Declaration and Constitution — by the last administration that has caused tens of thousands of Americans, like me, to leave the country. I note, with utter dismay, that the current adminstration is continuing many of the Bush/Cheney polices in a slightly morphed form and under different names. "Change!" ( . . . with significant exceptions.)
BTW, there is no "people as property" language in the Constitution, per se. It was added later by Justice Roger B. Taney and his slave-owning buddies in the Dred Scott case. The ruling was, actually, that blacks, free or slave, are not "men" under the Declaration nor humans under the Constitution and therefore had no business being in a federal court suing for their freedom, or for anything. Also a state cannot set a slave free because that would violate the 5th Amendment "takings clause." 600,000 dead Americans and rebels later, that viewpoint changed.
Curious, much obliged, but the point I had in mind (purely hypothetical, of course) would be the case of an American who pursues his happiness by f0rtur1ng selected non-Americans, off the sovereign territory of the USA. I was thinking of the admirable role played by The United States of America, in pushing through the United Nations Declaration of Universal Human Rights, and also of the much more recent legal opinion from Chimpy, Cheney, Addington & Crew.
In short, is it his absolute Constitutional right, to carry on pursuing his happiness in this way?
That's why I was seeking to make a distinction between "human" and "property" rights, under the generic term "personal" rights.
"That being the case, I return to my original point, which is that American judges, academics, and lawyers ought to put a lid on the lofty p-q-p rhetoric."
All that blabbing just to piss in the wind.
"The US system was founded on such fair play concepts, but has long since strayed into the European philosophy of maximizing the public good at any cost."
Revolution. 50 years? Less than 50 years? I still think things will get worse before they get better absent charismatic leadership in the opposite direction. But public support for going in that direction is sorely lacking. You have but merely to discuss issues with those around you to see. They're vehemently opposed to straightening things out.
"Life, liberty, and the pursuit of happiness" is one of the most famous phrases in the United States Declaration of Independence. These three aspects are listed among the "inalienable rights" of man.
Babel, I had in mind the Constitution as originally drafted, with its distinction between people who are "free" and other people, who are (implicitly) not. I note there was a later amendment, to abolish slavery. I was thinking that a slave is property. Is it not?
Does one really have to choose between mutually exclusive US and European positions? I had thought not.
You don't ever mention "human rights". Was that an oversight, or calculated? Are human rights an exclusively European pre-occupation too?
You've obviously never read the US Constitution, Max. There is no " 'people as property' wording" in the Constitution and there never has been. What there is is the 13th, 14th and 15th Amendments defining US citizenship, securing citizens' rights against state encroachment, and abolishing slavery.
Your point about the distinction between personal and private rights is as daft as the way you stated it. Sure, many personal rights could be looked at as property rights, and vice versa. Is the 2nd Amendment right to bear arms not as much a property right as a personal right? Maybe, but such distinctions are specious.
Clearly, a person's rights in his patent are a property right, but there is no property right in a patent until the patent is granted. However, a person's right to obtain a patent is a personal right. A person's right to be treated fairly by the federal government is also a personal right. Americans don't really expect Europeans to understand such fine distinctions.
Your position is that extracting a discovery from an inventor by forced publication prior to grant of a patent is justified as being in the best interest of the public. It seems to be generally shared by others posting comments here.
My position is that this tactic is essentially an adhesion contract — it is neither fair nor justified. The point is not whether or when PGP should act as prior art; the point is whether there should be such a thing as PGP.
IQ = 6 and others argue if you don't like the quid pro nihil deal, don't go foreign. A love it or leave it approach that hardly addresses the inequity of forced publication.
But they are right — it's a done deal, the US has sacrificed its moral high-ground and sense of fair play to the exigencies of international harmonization, and, as you argue, the interest of the public good.
That being the case, I return to my original point, which is that American judges, academics, and lawyers ought to put a lid on the lofty p-q-p rhetoric. The US system was founded on such fair play concepts, but has long since strayed into the European philosophy of maximizing the public good at any cost.
Readers, on reflection, what bothers me in the above is the eliding, under the term "personal rights" of property rights and human rights. It is not so much the original "people as property" wording of the US Constitution, or even what Babel writes about it, but more the very recent expert legal opinion from the law firm of Chimpy, Cheney, Addington & Crew.
Thanks for the discussion of utilitarianism vs personal rights Babel. You write:
The argument that forcing publication of patent applications prior to issue is justified because it favors the greatest public good could be equally applied to waterboarding.
,,,,,,,,,,,,
…in which it is the word "equally" that troubles me. I'm hoping that the meaning you intended was "also", rather than "just as persuasively" because, to me, it isn't equally persuasive. Not by a long way.
carnac says:
"if you don't like it then go file your applications in your own patent office and grant yourself your own patents"
play nicer, 6.
Jebus BB, you know good and well that the quid pro is just fine, and yet you go on and on about it. If you choose to throw the qpq out the window so you can execute a uber leet filing strat across the world then that's up to you, but the gov will allow it.
In summary, if you don't like it then go file your applications in your own patent office and grant yourself your own patents, and enforce them with your own courts, and back up your courts with your own private army.
Surely that is acceptable to you.
Noise above Law says:
"6, I don't comprehend your statement. It appears to make no sense."
Jules, expect this sentiment the more you learn.
broje, "Jules makes an interesting point that maybe 18 month publication has contributed to the backlog. Mayeb we should consider moving to 6 month publication to try and shave a year off pendency."
It would certainly set us apart from the rest of the world. Then the rest of the world could harmonize to our standards.
Well, Max
If I were John Stuart Mills, I would agree with you, but I'm not and I don't.
An ancillary to q-p-q is: nil pro nil — I don't have to give you what I have if you're not going to give me anything.
The inventor who is forced to give up his discovery to the world before he knows whether or not he will get the patent is in the same position as you would be if you had to give $30,000 to a car salesman before he decided whether or not he would give you the car, and he keeps the $30k regardless of whether or not you get the car. In this analogy, the public is the car salesman.
The difference between the US system and the rest of the world's is that patents have a Constitutional basis in the US, and there's a lot of emotion attached to anything that is "Constitutional." Because of this connection, patents are considered by many to be a personal right, which is often expressed as the quid pro quo arrangement between the inventor and society.
So there are these personal rights inherent in the US system that Europeans know nothing about. J.S. Mills' utilitarianism trumps personal rights in Europe generally, and it's getting more and more like that in the US.
broje — published US applications are probably easier for examiners to search than published foreign applications.
also, I wonder how many published US applications are never foreign filed, and thus do not have published foreign application counterparts
"Not in my experience. I have seen many a rejection based on a Japanese abstract, "
I reject over a jap app every 5 cases or so, but that doesn't mean that I ever search them. Ever.
"Jules makes an interesting point that maybe 18 month publication has contributed to the backlog. Mayeb we should consider moving to 6 month publication to try and shave a year off pendency."
That would add a year, not shave a year.
broje says:
Paul and Jules,
You both rebutted my comment about the availability of provisional 102(e) rejections. But let me ask you this.
US applicants still have the option to request non-publication in the event that they do not plan to file foreign. But everyone files foreign. Everyone also filed foreign before the US started publishing applications.
Back in the day, foreign countries would publish the US originating applications 18 months after the US filing date. So basically, every US application that was foreign filed was published at 18 months anyway, and that was every US applcation for all practical purposes.
So what has really changed? Were US Examiners incapable of searching foreign patents? Not in my experience. I have seen many a rejection based on a Japanese abstract, and most foreing filed US applications were published in English anyway. So it would not have been difficult for the US Examiner to find the publication of the foreign application and identify the corresponding US case.
As far as provisional 102(e) rejections being illegal, well, they were certainly happening. I saw them, and the Examiner provided the copy of the foreign application publication to let us know we would be screwed when the US case issued. They were successful at least in delaying the issuance of the rejected application until the other patent issued and the Examiner could make the rejection official.
So, again, what has the publication of US applications really changed? I still maintain that it is not that much.
Interesting comment Babel. I had supposed that the logic of any patent system anywhere in the world was that progress in useful arts is promoted by early disclosure of inventions. But there are some in the USA that maintain that what delivers progress is issuance of examined patents. Thus, it is "harmonisation" that is invoked, to explain the need for publication of unexamined applications whereas folks like me think it accelerates progress and therefore is a good thing even without any pressure to harmonise. The fun part is that nobody, least of all the economist academics, really knows whether A publications are accelerating or decelerating vital progress, so we can all vent our prejudices without fear of being proved wrong.
My original quid pro nil point was that academics, judges, and, yes, lawyers, ought to stop lying about quid pro quo. Q-p-q was once the cornerstone of the American system, but it has been sacrificed in the interest of international harmonization. And maybe that is good. All I'm saying is drop the lofty and misleading rhetoric.
Now, as to requesting non-publication. Did you know that if you ask your client, "Are you going to file overseas?" and he says "I dunno'." you cannot request non-publication?
Did you know that if your request for non-publication is filed on the same day as your application but in a separate communication it is not valid?
Did you know that if you discover an error in your request for non-publication, you have an affirmative duty to rescind it?
Did you know that if you file a Canadian application, withdraw it, and then file the US application, you cannot request non-publication?
The USPTO wants that $300 publication fee real bad, so they make the rules for non-publication as onerous as possible, which means that if you file a non-publication request, you are just begging for trouble down the road.
Anyone who asserts that the US system is based on quid pro quo has their head up their but.
Fuddy Duddy,
You seem to rather miss the point with "Think about it this way – if you are an inventor and you don't get the patent, then what was published was NOT an invention, so you gave no quid, you get no pro". The point is that in cases where the Office incorrectly denies you a patent, you have had your work published, and thus, you have provided the quo without receiving the quid. The assumption that because you did not receive a patent, you do not have patentable material in the application CANNOT be made. Of course, avenues such as non-publication requests can alter the dynamics, as 2100examiner, among others, points out.
2100examiner,
Hopefully further posts have helped you understand more about the quid pro quo arguments. If not, consider that while you can request non-publication of your application, you cannot request non-publication of a patent that matures from that application. Thus, the patent publication should make sense to the quid pro quo.
Bierbelly,
To answer Q?, the presumption of validity would have to be a factor in the discussion. It isn't. Published applications enjoy the status of other publications, not the status of patents. Q2? thus does not make sense.
I appreciate the dialogue – you raise my estimation of blogging examiners (of course, that wouldn't take all that much, given the most loquacious blogging examiners' track records.
As to whether Congress would bite on the temporary adjustment to unlock the 5 mil, it seems that you and POPA are betting yes. That's not a bet I would make – Congress didn't ask for a temporary adjustment and they did ask for a comprehensive review and implementation. It is pretty hard to read "comprehensive" as quick fix, temporary and/or "just a start".
A couple back-and-forths during prosecution after the first action easily tacks on another year in addition to the original 18-month wait, so I can easily see why the average pendency is 33 months.
crystalcityconcreteworld says:
"The fact is that publication is only required if your client chooses to enter the foreign arena".
Ok, let's say you choose to pursue foreign filings via PCT or Paris, then if it's going to be published somewhere around 18 months anyway? Why duplicate that publication with a US publ app? Again, you must file the nonpublication request AT THE TIME OF FILING, which cannot be overemphasized. In the real world, this means that the applicant is forced to consider and make a very significant IP decision very early in the process. And then several months later, the applicant gets contacted again to talk about filing a rescission request on that recent big decision. what a joke. The applicant's hand is effectively forced earlier by the current process, and the benefits derived from US pat pubs for all this sweat and cost remains to be seen. The 20 year term solved the problem.
An Examiner said, "You'd look at applications filed say… +-6 months to your application's filing."
Yep. And now you'd also look at applications filed in the 18-month period before your filing date. That even rules out many 1.131 affadavits.
That's also why an 18-month non-action period before any first action on a case is the most logical.
"Correct and incorrect, respectively. You indeed can donate your client's foreign filing rights to the public at the time of filing, but if the client's invention turns out to be commercially important you also better make sure your malpractice insurance is current."
The original complaint was that the US system has changed so that it no longer provides the quid for the quo. The fact is that publication is only required if your client chooses to enter the foreign arena. If he does, he can't really complain that the US system is forcing publication, unless he's also willing to give up all of those other nice things we get via Paris and the PCT.
Incidentally, requesting non-publication at the time of filing is not tantamount to "donat[ing] your client's foreign filing rights to the public." You still have the same one year to make a priority claim that everyone else has. Finally, if someone is making decisions about publication and foreign filing without his client's authorization, as your comment implicitly suggests, then he shouldn't even be allowed to have malpractice insurance.
"I would say that it's a bit harsh to deny to all of them everything that is rendered obvious by the unpublished content of the first filing but, hey, if that's how you want to treat your inventors, Leopold, I'm not stopping you (am I Noise)."
Max, I'm flattered that you think it's my decision, but I just work here. That said, I think you're looking at it backwards. Try starting from the perspective expressed in Thomas Jefferson's comment, when he wrote "That ideas should freely spread from one to another over the globe, for the moral and mutual instruction of man, and improvement of his condition, seems to have been peculiarly and benevolently designed by nature, when she made them, like fire, expansible over all space, without lessening their density at any point, and like the air in which we breathe, move, and have our physical being, incapable of confinement or exclusive appropriation."
Given the starting point that ideas and technology can't be consumed and are naturally non-rivalrous, and that attempts by government to restrict the free use of ideas and technology are inherently unnatural and necessarily somewhat arbitrary, isn't the paramount issue for society simply whether the patent system is efficient at generating disclosures of ideas?
From this perspective, the patent monopoly is only an enticement for disclosure, not a reward for the innate worthiness of the inventor. It's only when you turn the system around backwards, and make the patent monopoly a government entitlement, that you get to a point where it's harsh to deny that monopoly to those who ultimately aren't adding to the public stock of information. Sure, they are smart and worthy people, too, just as the "first" inventor is. But society is not obligated to hand out patents for that alone.
(Isn't it harsh to deny millions of people that big lottery bonanza, even though they turned over a dollar just like that winner did?)
I'm surprised that you assume that the lay people you communicate with are incapable of understanding that.
"You can request a non-publication of your application. The quid pro quo argument makes no sense."
Noise "not going to happen – the five million is locked until that study (and implementation) are complete.
I read the artical pretty critically, so I understand. I don't always write in the most legally proper way. My statement was more of a "check this out."
I was not involved in the USPTO/POPA discussion, so I don't know exactly what proposals POPA offered, but for some reason I doubt it was regarding PGPUBS increasing the art available and creating more work for examiners. If it were, then PTO management might have been convinced or at least intrigued. As far as I know, me and the others on these blogs lately have been the only ones drumming up support. There is a downside to anonymous blogging – not everyone reads it, even if it does make sense.
I know the locked funds belong to the USPTO. Unfortunately, the amount of money it will take to unlock those funds will probably be more than $5 million. That is why I said they should just take this PGPUB factual basis position and temporarily adjust the production system. I think the facts speak for themselves and are fairly "comprehensive." I guess it depends on your definition of "comprehensive," but maybe Congress would accept a staggered approach. First, adjust the standards based on at least one factual basis right in front of you, then weight more options.
If Congress doesn't release those funds because the standard of "comprehensive" is too high, then this process will take many years. What kinds of studies are necessary to be comprehensive? There will be a lot of subjective factors, which leads me to believe the outcome will be pretty much worthless anyway. If the study is anything like the previous one, then they will see how long it takes a GS-12 examiner to successfully complete their job. Unfortunately, the data may be skewed because of the unreasonable requirements currently imposed on them. They perform their job just so they can meet those requirements.
Consider the amount of voluntary overtime they put in to meet production.
That's all I have for now…
2100examiner says:
Bierbelly says:
Q? Should published applications be given the same presumption of validity, particularly by the PTO when used as prior art, as are issued patents?
Q2? What if the published application is ultimately abandoned? Presumed valid?
I'm happy that my contributions have stimulated such an enlightening exchange as that, immediately above, between broje and Jules. I suppose they are both right, which leaves me wondering:
1. Is the burden on the PTO easing, or is it increasing?
2. In future, will "they all get patents" still, or is it turning into "none of them gets a patent"?
"but in the meantime the extra RCE makes it look like the USPTO is not doing its job. Reality is a different story."
Even granting the most liberal interpretation of the data (as evidenced by a merely nearly 12% for 2009 – see graph at top of story), the USPTO cannot rely on the discussion points in this thread to even come close to excusing the "job" that has been done (or more to the point, NOT done).
The point is, broje, that the related art being used to reject the application will tend to mandate an extra rejection that never would have happened pre-AIPA. The rejection may be a 102 rejection, but is more likely a 103 rejection. Multiply that with KSR, and you have an exponentially decresing allowance rate. Yes, maybe each one *eventually* gets their patent, but in the meantime the extra RCE makes it look like the USPTO is not doing its job. Reality is a different story.
But, in reality, they all get patents Max. Unless an interference is provoked, each subsequent filer just swears behind the first filer. Then they can negotiate cross-licenses, or go to court and invalidate each other's patents. In effect, I think that it is a policy that reduces the burden on the PTO and the Courts, and motivates those who more or less simultaneously invent common subject matter to cooperate, create a patent pool, what have you. So the motivation for market players to innovate and disclose is still kept intact. It seems like a viable system to me.
Well, I'm happy to read what the Examiner added there, about independent inventive activity going on simultaneously, resulting in concurrent filing patterns all by worthy inventors. I would say that it's a bit harsh to deny to all of them everything that is rendered obvious by the unpublished content of the first filing but, hey, if that's how you want to treat your inventors, Leopold, I'm not stopping you (am I Noise).
Yes, that's the stock answer Leopold. Very well put, if I may say so. But for me the downside is that it blurs the distinction between novelty and obviousness.
Why do we need both of these legal concepts? Why complicate more than necessary? Just deny protection for any subject matter that's obvious. What work remains for the "novelty" provision? If we are not clear as to the difference, then it all gets a bit fuzzy, whether D1 renders the claim obvious, or deprives it of novelty but, hey, what the heck, it all comes to the same result anyway so why bother. Meanwhile, under the EPC, it does not come to the same result so you do have to be particular, about the difference between novelty and obviousness. They are there to perform mutually exclusive legal tasks. Obviousness is there to stop patenting of differences from the state of the art that are obvious. Novelty is there to mediate beween rival filers with different filing dates but all of which have claims that are inventive over the encyclopaedic, all-embracing knowledge of a notional member of the public. We are not going to give all these inventive individuals a patent. The first gets the patent. But all the others get a FULL measure of reward for their contributions, the better to Promote the Progress. They get patents for everything under the sun and included in their apps that has bare novelty over the earlier filings.
As I said, not difficult to explain to lay people in a way that leaves them satisfied with the underlying logic of the patent law.
An Examiner says:
"questioning whether this newly available prior art has been a factor in the dropping allowance rate".
Um, yes. It has been a factor. So have advancements in search engines. So have advancements in information becoming widely available online.
To what degree have PGPUBs been a factor? Tough one. As an examiner, I'm gonna go with "significantly". Here's why:
Most "good" prior art for inventions are found within a time threshold +-X filing date of the filing date of your application. Similar advancements in technology generally occur around the same time. In fact, interference searches used to be done this way prior to PGPUBs. You'd look at applications filed say… +-6 months to your application's filing.
PGPUBs allow these similar inventions within this +- time threshold to be EASILY available to examiners within the prosecution pendency time frame of the applications they are examining. I'm not saying that prior to PGPUBs the similar applications weren't available during the pendency, or that it's even a issue for all applications. But for a significant portion of applications, it's a HUGE help to have inventions within that +- time frame readily available from the beginning.
There's nothing particularly wrong with the underlying logic of present US patent law. The problem is that you're trying to take the PHOSITA, which is a hypothetical construct, and treat it as if it were a real person.
The US law on obviousness is simply a policy choice – the US won't grant a patent on an obvious advancement over something that someone else has already filed (provided that the earlier filer allows his disclosure to be published). The latecomer's contribution is simply deemed insufficient, as a matter of policy, to warrant the monopoly of a patent. Sure, it's different than the choice reflected in the EPC. However, there's nothing "illogical" about assuming, for the purposes of obviousness analysis, that our PHOSITA had knowledge of the unpublished application. Indeed, it's just as "logical" as assuming that the PHOSITA is aware of the contents of everything that's ever been published, anywhere in the world. Both are impossible for the real person, but work just fine for our hypothetical PHOSITA.
"…and work out how to explain to a lay person the underlying logic of present US patent law."
Don't you yourself have to first understand that which you are trying to explain?
Careful Max, too much thinking is not your forte.
The thread seems to be about how disclosures published on date X can nevertheless, years before that date, ie even while they were still UNPUBLISHED documents, nevertheless have had the prior art effect, back then, of making claimed subject matter obvious to the PHOSITA. Excuse me while I take a while to scratch my head, and work out how to explain to a lay person the underlying logic of present US patent law.
Ya. My understanding is that the abandonment of the application does not make it no longer 102(e) art. 102(e) includes published applications for patents, not just pending applications or issued patents. But you have the option to swear behind the effective US filing date of such a reference.
IMNYL. TINLA.
breadcrumbs says:
How can an "unpublished application" have a publication date?
"One of these two unpublished applications, however, was then abandoned without any child patents. Of course my application fell in-between the filing date and the publication date. … What is the law here?"
Steve, I am not your lawyer, etc. But it appears from your question that by "unpublished" you mean only that the references were not published at the filing date of your application, but were later published. If so, I believe the answer to your question "What is the law here?" is that the law here is 35 USC 102(e), (as well as 35 USC 103, since this is an obviousness rejection). I also think MPEP 2106.02 is reasonably clear on this point.
"Unlock $5 million from Congress. Do a full unbiased and independent re-evaluation of the system with that $5 million"
– not going to happen – the five million is locked until that study (and implementation) are complete.
See more on this at:
link to ipwatchdog.com
"Now that pgpubs have killed off the USPTO's stream of revenue by decreasing allowances, how should the USPTO change its business model to account for this?"
Good question. Answer: adjust the production system, taking into account the facts that examiners do more work with PGPUBS available. Unlock $5 million from Congress. Do a full unbiased and independent re-evaluation of the system with that $5 million, learning from past mistakes, with an eye towards the future.
'All that is necessary for the triumph of evil is that good men do nothing'
That's right. I want to correct what I asked above: "is i[t] bad timing with the budget situation to propose something that appears [counter]intuitive, but in actuality it is logical?" In other words, do you not have to spend money in order to make money?
Further thought: Art 54(3) EPC imposes a rigorous and ever-present obligation to distinguish with absolute precision between novelty and inventive step, whenever assessing the "disclosure" of a document. This is good for legal certainty and for keeping patent law clean an simple. For a mind unburdened by prejudice, it is also easy to do. When there's a prejudice against Art 54(3) coming round to it takes some time, but EPC logic wins in the end (witness the recent capitulation of the German courts, after holding out for 30 years).
Don't bother, at 4.54 pm yesterday, cals MaxDrei an "idi0t", then posts an Economist article, thus:
Completely off topic, but here's a link to an article about the European patent system that's not exactly as glowing as that idi0t Max's assessment:
link to economist.com
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This well-known Economist article laments the chaotic European landscape for patent litigation, rather than the substantive legal provisions of the EPC, or the way the EPO examines patent applications. I had thought that Max's love affair was with the EPO, rather than with any pan-European ideas how to manage patent litigation.
Mr Zweig, the (whole contents/novelty only)position under the EPC has been deadly clear these past 20+ years. See the painfully few words of Art 54(3) and 56, EPC. That's the advantage of a new Statute, written on a blank sheet, in the 1070's (when each country contributing to the drafting was able to rubbish the legal situation pertaining hitherto in every other contributing country). The USA might like at least to examine that legal solution for its efficacy and practicality, before blundering blindfold yet further into uncharted legislative waters.
Steve Zweig says:
I just had a 35 USC 103(a) rejection as "obvious" based upon a combination of two unpublished patent applications. This must have been obvious to a PHGSITA (person having god-like skill in the art).
One of these two unpublished applications, however, was then abandoned without any child patents. Of course my application fell in-between the filing date and the publication date.
What is the law here? If the patent had not been abandoned, then the priority date would have been the filing date, of course. But the way I read the MPEP, the priority date of an abandoned application (with no children) looks as if it is the publication date rather than the filing date. Can anyone cite some definitive answer here?
"if you are an inventor and you don't get the patent, then what was published was NOT an invention"
Fuddy Duddy says:
Re: Quid Pro Quo –
Think about it this way – if you are an inventor and you don't get the patent, then what was published was NOT an invention, so you gave no quid, you get no pro.
I would think that examiner mixed up utility and enablement.
Re 2005/0027316 the examiner questioned the utility of (1) producing a less savage empowered child culture and of (2) converting a dead person's bones into a microprocessor. I could use a less savage empowered child culture in my home, given the presently reigning savage empowered child culture; and bones to microprocessors seems useful enough.
I was dissapointed not to see art rejections in addition to the 112 rejections.
A plurality of thresholding units says:
This one's worth perusing in PAIR, also. Did you know the USPTO doesn't accept railroad bonds as fee payment?
"BEAM ME UP SCOTTY!!!! US 2006/0071122"
I'm just surprised that this wasn't suppressed for national security reasons. Imagine the fun our special forces could have with this.
This one is my favorite: US 2007/0135676
Figure 8 is priceless.
I was skeptical until I saw the enabling disclosure of the granite stone obelisks.
1. A full body teleportation system consisting of:
generating a pulsed gravitational wave which propagates through a magnetic vortex wormhole generator; and
generating a wormhole with the magnetic vortex generator whereby the pulsed gravitational wave traverses through the wormhole and enters into hyperspace where the wave is enormously magnified due to the lower speed of light in that dimension.
2. The method of claim 1, wherein the step of generating the pulsed gravitational wave comprises:
using two granite stone obelisks;
mounting monochromatic-wave toroidal waveguides on top of each obelisk to create a rotating, twisting, propagating gravitational wave through the vertical axis of each obelisk; and
creating a cylindrical compression and expansion in each obelisk to produce a plane gravitational wave traveling down the centerline between the two obelisks.
Rev. Rubberstamp says:
"What do you call your religion btw?"
Church of Latter Day Sunners
don't bother says:
The position that increased PGPUBS provides more work for examiners may be used to unlock $5 million in funds from Congress. It is a fast-track avenue to a short-term production adjustment which may appease Congress to unlock funds per the 2009 Omnibus Appropriation Act.
"The production goal review got rolling after Congress inserted a line in the 2009 Omnibus Appropriation Act stating that "of the amounts provided to the USPTO within this account, $5 million shall not become available for obligation until the Director of the USPTO has completed a comprehensive review of the assumptions behind the patent examiner expectancy goals and adopted a revised set of expectancy goals for patent examination.""
See POPA's July 2009 newletter, page 2: link to popa.org
Or is is bad timing with the budget situation to propose something that appears unintuitive, but in actuality it is logical?
"6 — I think that it is the "reject reject reject" PTO philosophy "
Well, I think god created the earth in 7 days. And I have just as much evidence to support my position as you have to support yours.
"6, I think it should start by firing you. You are on here so much, how in god's name can you be contributing to reducing the backlog?"
I work weird hours.
just a lowly patent agent writes: "if an inventor files an application on an invention (after doing a thorough prior art search, of course), and later on another application publishes that was filed more than a year before the filing date of the first application, the 2nd application is 102(b) prior art even though it was not publicly available at the time of the filing of the first application."
For the second application to be 102(b) prior art against your application, it had to have been PUBLISHED a year before your filing date, right?
"6, I think it should start by firing you."
Addition by subtraction. I like it.
old retired attorney says:
6 — I think that it is the "reject reject reject" PTO philosophy which has reduced the number of allowances, not the pgpubs. See
link to patentlyo.com
including the BPAI backlog, see
just a lowly patent agent says:
Here is the issue I have with published applications: they should not be prior art retroactive to the filing date, but only as of the publication date. The reason being that if an inventor files an application on an invention (after doing a thorough prior art search, of course), and later on another application publishes that was filed more than a year before the filing date of the first application, the 2nd application is 102(b) prior art even though it was not publicly available at the time of the filing of the first application. How can the first application possibly be obvious over the second if the second application wasn't publicly available (and thus the inventor of the first application could not have possibly known about it) until after the filing of the first application? It seems that there is a problem with this policy.
Let's discuss the real elephant in the room.
"The EPO is doing a lot of citing of US A publications these days."
You're very welcome. The problem with published apps, from the American tradition (non-social democratic), is the risk of having your "trade secret" confiscated by the government and given to your competitors. In the 90's, the outcry in the U.S. over the submariners temporarily overshadowed that concern. Corporate america is now reacting to the current situation, but enjoy the free art in the meantime.
Wire Service says:
DOJ Seeks Stay on New Patent Rules
The U.S. Department of Justice has asked the U.S. Court of Appeals for the Federal Circuit to halt all proceedings in its en banc review of controversial patent prosecution rules until after the Senate confirms a new director of the U.S. Patent and Trademark Office.
Paul F. Morgan says:
Re: "in the 'old days,' the non-published applications could still be used in a provisional 102(e) rejection."
Actually, extremely rarely: Only if the examiner could find an appropriate application and knew about that MPEP practice suggestion, and, most importantly, only if the earlier application was commonly assigned, which of course precluded citing most applications. [Obviously an examiner could not cite a secret pending {unpublished} application of one party egainst another party.] Furthermore, the CAFC never approved that MPEP-generated "provisional 102(e)" rejection practice, and even questioned its statutory validity in dicta in the one case that even mentioned it.
As to another question above, the surprisingly high percentage of U.S. applications with foreign priority claims, especially from Japan, existed for years before the 1999 AIPA started U.S. application publications. [Which the rest of the world's major patent systems had already had for many years.]
Michael Brooks says:
As pre-grant publications "internationalized" US practice, it was a bit disappointing to expect (and now to have seen) novice pro se inventors having what might have been a patentable trade secret published as an informal patent application for public consumption. I am surprised the extent to which persons who consider themselves sophisticated have confused pre-grant publications with issued patents. (E.g., PGPs have been cited in lay blogs as evidence that the Patent Office grants patents for anything that's submitted.)
Move over graphic novels and Harry Potter books:
Being the default mode of a new application, the pre-grant publication allows us a view into the world of examiners of pro se applicants – perhaps unwittingly allowing their applications to publish. See for example:20070033732; 20070035812; 20050256552; 20050030190; 20040195764; 20070033732; and 20030047088.
The pre-grant publication process also fills its database with short stories, and a few novellas, that (based on their publicly viewable file histories) are not all necessarily on track for a first action notice of allowance. See for example: 20070035812 and/or any of the St Clair publications: 20060014125; 20060168937; 20070285325; 20060180473; 20060145019;20060144035; 20060112848; 20060072226;20060071122; 20040164824
20040102810; 20030230675; 20030209637; and 20030209635.
Then there are those pro se applications that are interesting to read, e.g., 20020013139.
And then there are those having patent counsel and file histories that are very interesting to read: e.g., 20020018333 and 20030114313.
"The American system used to be based on the premise that the inventor gives the public his invention and in return the public gives the inventor a limited monopoly. The public didn't get it's part of the deal until the patent issued."
The American system still offers the exact same deal. All you have to do is ask, pursuant to 35 USC 122 (b)(2)(B). If you want to participate in the international system, then you have to play by the international 18-month publication rule. But that's your choice.
Patent Prosecution Ecstacy says:
MD "American applicants are probably now increasingly doing what everybody else in the world has been doing for decades, namely doing "defensive filings" to get the technology published good and early, to block the filings of the competitors."
Certainly true in my practice.
But with mandatory publication, the inventor has to give the public his invention regardless of whether or not he gets the monopoly.
The q-p-q incentive does not exist if the inventor is forced to publish. The public gets what it wants even if the examiner scrrews the inventor by entering invalid rejections.
Pre-AIPA, if I got to the end of prosecution and didn't like what was allowed, I could abandon the application and neither I nor the public got anything. No quid, no quo. I could rely on trade secret or simply sit on the invention. The PTO thus had an incentive to allow my claims because if they didn't, nobody was going to see the invention.
I agree that if there is nothing new in the claims, then there is no basis for q-p-q. But 103 rejections are subjective to begin with and loose 103 rejections combined with mandatory publication is the primary way the PTO strips an inventor of his invention without giving him the monopoly.
broje: People will always get caught up on your point. Let me reiterate my rebuttal, although it clearly needs to be developed further.
"it [may] be illegal to make a provisional 102(e) rejection unless for the purpose of interference [with respect to unpublished non-commonly owned and non-commonly assigned copending application]. Interference is not a common occurence. Further, MPEP 706.02(f)(2) is only for unpublished patent applications that anticipate the claims at issue. Anticipation is much more difficult to maintain than obviousness, which further diminishes the impact [of provisional 102(e) rejections]."
Forgive me, I don't know the proper format for changing words in a quote or adding context, so I used those brackets…
Night Writer Patent Attorney says:
>>Don't understand the "quid pro quo" point.
Come on now. It is fair to say that some applications are abandonned that recite a patentably distinct invention. They may be abandonned for many reasons including that the examiner may have unfairly rejected the claims and the applicant cannot afford to continue prosecution.
Prior to the publication rule, these inventions would not be available to the public, but with the publication rule they are available to the public.
1. The EPO is doing a lot of citing of US A publications these days. American applicants are probably now increasingly doing what everybody else in the world has been doing for decades, namely doing "defensive filings" to get the technology published good and early, to block the filings of the competitors.
2. Don't understand the "quid pro quo" point. The A publication of something new and not obvious is a massive deterrent. Every competitor reading the A can imagine claims of grotesquely broad scope going to issue. Back in the days when there were no A publications, they were all instead in blissful ignorance. Of course, if there is nothing new and inventive in the A, there is no quid to justify entitlement to a quo.
The article was a little hard to follow, but I understood it to mean what the Fud was saying. But maybe others not as familiar with patent law would be confused.
Meanwhile, I have a hard time swallowing the whole premise that the published applications actually put more usable art on the table. The reason is that, in the "old days," the non-published applications could still be used in a provisional 102(e) rejection. Meanwhile, the published application that never issues is not a big deal, because it apparently teaches nothing new or non-obvious. So, presumably, there must be other, earlier, art available that teaches the same things. The only real game changer is that the published application becomes 102(b) art earlier, which impacts the applicant's abilities: (1) to use the 103(c) exception to 103(a); and (2) to swear behind the reference. In my experience, those remedies were seldom employed even before the publication rules changed. So, in my view, the impact of the change in the publication rules is small.
The 800-lb gorilla in this room is the mythical quid pro quo theory of patent rights. Anytime the inventor is forced to publish his invention before examination is complete — often before the first OA — the whole quid pro quo goes out the window.
After publication, any examiner can deep six the application for any bogus reason and the inventor who doesn't have the money to fight loses all of his rights. The public gets his invention; the inventor gets nothing. Quid pro nil.
I wish the pie-in-the-sky judges, academics and other Pollyannas would put a lid on their "quid pro quo" myth.
"40+% of U.S. applications have a foreign priority claim," – yes, but from what time period is this statement pertinent?
Just to add one more bit to what above commentators have already accurately noted:
40+% of U.S. applications have a foreign priority claim, their USPTO publication date runs from their foreign priority claim date [so is often only six months after their U.S. filing date], and that publication cannot be optionally avoided [unlike U.S.-only filers].
This is a HUGE increase in more EASILY searchable in ENGLISH prior art as compared to the pre-1999 U.S. AIPA statute situation.
I also do not think it is at all coincidental that the number of new interferences being declared is now also VERY much lower than before this statutory publication change and its associated 135(b)(1)&(2)change on both interferences and Rule 131 usage, and electronic application publication searching, all took full effect. [Notwithstanding the later, additional, In re Winter case law effect of now requiring "cross-reading" of claims for interferences.]
Blimpy says:
This is embarrassing…
A provisional application that is allowed to lapse is not available as prior art as I understand it. So, if I file a provisional application and then don't file an application claiming priority to the provisioanl application, as far as I understand it that is not available for prior art. Additionally, I could still file another application–say 2 years later–for the same invention without the prior provisional application being prior art.
Disclaimer: I've had too much coffee this morning.
Thomason says:
Your last lines spoke the loudest – citation to published applications has reduced the allowance rate, especially since the examiners can cite applications that were rejected and never issued. Those may fairly indicate the 'state of the art' but often examiners will 'find' something in a rejected, published application that may not be there clearly. Tough to deal with phantom publications.
Tiddlywinks says:
I assume Dennis meant the publication of non-provisional applications. As the examiner above noted, we like PGPubs because they're easier to quote from. However, their earlier publication date makes them statutory bars much earlier than the associated patent, so if both are available, the PGPub is a better source unless the patent issued more than a year prior to the app being examined. Another major factor is that they get information into the public domain where the examiner can find it sooner. That is, if app A is filed in 2004 and not published, and I'm examining app B filed in 2005 which is extremely similar to app A, I may have examined and allowed app B by the time app A is patented, even though app A anticipates the claims of app B under 102(e).
*** disclaimer: I have not yet had any coffee ***
Just Visiting says:
The good professor surely meant to refer to patent application publications, or published applications when he used the term "provisional application"
yapex says:
When both a PGPub and patent document are available, I tend to use the former as it is easier to quote (paragraph vs column/lines). The two are substantially the same, although the patent document may have informalities corrected and claims finalized.
"the early publication of provisional applications"?
Another AnonPatent Atty says:
Perhaps it would also be possible to make a study of the citation of older references v. newer references.
Of particular interest, only the newer part of the collection is electronically key-word searchable. Nobody does hand searching through shoes any more. Has this led to a significant reduction in citation of the earlier references, and, if so, how large is the effect?
Ultimately, is there an over-reliance on electronic searching, and has it led to a decrease in quality of examination in the traditional art fields?
Patent_Medicine says:
I'm thinking that Dennis might have meant (generally) that utility applications publish "early" (i.e., as early as 6 months after filing) if claiming priority from a provisional.
But I need my coffee, too.
Casual Observer says:
Having spent a lot of time dealing with the nuances of classification of patent applications so that you can actually find information I will make the following observation – the number of published applications disclosing art that is already patented is significant. The number of applications flowing in vs. the number granted is a testament to this issue. Then add convergence issues – like the smoke detecting cell phone where the art being patented is a combination of previously patented inventions – your head will spin. Now add poor search tools that are driven by Boolean searches and keywords and links to internet prior art references that are dead and your head will soon explode.
Interestingly the examiners have their hands on the stuff that is novel. It would be interesting to see how many of the patent apps cited by examiners are actually granted vs. the patents cited by the filer.
Geez – I need coffee.
EDIT . . .
"""""A long these lines, the early publication of provisional applications triggers the clock for the statutory bar of 102(b)."""""
FALSE – not published – but WOULD be true, and completely scattered to have this thought in this part of your paragraph, IF you were referring to 102(b) effect of non-prov publication.
Dennis, have you had your coffee today?
"""""There are a couple of ways that the prior art created by patent applications change the prosecution game."""""
"""""First, provisional applications increase the sheer volume of prior art."""""
Um. Provisionals aren't published?
"""""Most notably, around ten percent of the published applications will never issue and would not have been otherwise published."""""
Um. 1) Doesn't tie in to Provisional misunderstanding and 2) is incorrect. The number of published applications that would never have otherwise seen the light of day is equivalent to 100%-(allowance rate). Give or take a few patents. In the old days, that means that about 25% fit your criterion. Today, about 75%.
"""""And, even if published elsewhere at a later date, applicants would be faced with the later 102(a) effective date rather than the 102(e) effective date associated with a published application."""""
Um. Really not sure what you're groping for here. A publication is 102(e) art the same as an issued patent was. What publication does is . . . put the 102(e) art in the public domain if the patent never issues, put the 102(e) art in the public domain earlier, create an earlier 102(a) art date relative to the patent publication, and create an earlier 102(b) art date relative to the patent publication.
"""""This ties in with the second importance of provisional patent applications — they bring innovations to light more quickly and in a manner that patent examiners can readily use."""""
Um. Not published, and the "readily use" thought is flat out odd. Why would provisionals, if they were published, be "readily used?"
True, but completely scattered to have this thought in this part of your paragraph.
"""""The evidence shows that examiners are using the patent applications."""""
Wow. Coffee.