International Patent Matters from a Canadian Patent Lawyer’s Perspective

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US Patent Law Reform has virtually arrived

Author’s note:

I have received advice that the posting of July 4 on the above subject is very dense reading. It is hard to follow but that is a consequence of the complexity of section 102. In fact, the prior version of section 102is just as hard if not harder to read. But it’s worth laboring over this new section because it represents the key criteria for obtaining a US patent.
 

To assist those who would prefer to have a shorter, though nevertheless rigorous, analysis of the issues relating to patent novelty under the new version of US patent law, the following synopsis has been prepared. 

 

                          US Patent Law Reform has virtually arrived
                                                         Synopsis

The revised US patent law

A new US patent law is virtually certain to come into effect in approximately 18 months. Similar bills have both been passed by the House and Senate. They only have to be reconciled.
This legislation has been promoted as introducing first-to-file criteria into US patent law for granting patents. It does, indeed, do that.
But the patenting requirements of the new law extend far beyond first-to-file which simply addresses the situation where competing applications are filed for the same invention.  This law will introduce the concept of “absolute world novelty” as a limit to the grant of a US patent. And, the law will add several remarkable additions to this basic concept.
The key provisions of the House bill that address the referenced novelty requirements are as follows:
Sec. 102. Conditions for patentability; novelty

a) Novelty; Prior Art-
(a) Novelty; Prior Art-

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or 

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

(b) Exceptions-(1) Disclosures made 1 year or less before the effective filing date of the claimed invention-
 

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–
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) 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.
These are the provisions that address the absolute novelty requirement. Other similar provisions address the case when two competing applications have been filed. This analysis will only discuss the above novelty requirements except to observe that section 102 (a) (2), above, refers expressly to the case of competing applications.
Basic novelty requirement
The key novelty provision under section 102 (a) (1) bars patenting where:
“the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention”.
The portion which parallels patenting standards around the world is as follows:
“the claimed invention was….available to the public before the effective filing date of the claimed invention”.
The new law carries-over words from the previous law as following:
“the claimed invention was patented, described in a printed publication, or in public use, (or) on sale …. before the effective filing date of the claimed invention”.
Unlike the previous law, public use and on-sale are not limited geographically to the United States but apply world-wide. The presence of these additional words makes the US law more strict than the laws of other countries which simply require that an invention not have been previously made “available to the public”.
Meaning of “available to the public”
There is no existing legislation under US patent law as to the meaning of “available to the public”. In Europe the disclosure of an invention to a single individual who is under no duty of confidentiality qualifies as making an invention “available to the public”.
However, significant jurisprudence has developed in Europe and elsewhere providing that, for a prior disclosure to qualify as a bar to subsequent grant of a patent, the disclosure must reach the level of being “enabling”. This means it must be sufficient so that others can build the invention after the patent expires.
Effective filing date
All of these novelty provisions are anchored to the “effective filing date” of an application. This means the date of filing in the United States, or the date of filing in another country around the world from which priority filing rights are claimed. Novelty as well as filing priority are both tested as a these dates.
Special Grace period of permitted public use

The new law also includes a one-year grace period that, as an exception to the above absolute novelty requirements, allows an applicant to publicize his/her invention before filing a US patent application. This grace period shelters an application as follows:
102 (b) (1) ….. 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–
A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor;
This provision continues the policy of allowing applicants one year to publicly disclose and test inventions before having to start the patenting process. This supports applicants in providing a better description of their invention. But it does not shelter an application from a pre-priority public disclosure by an independent third party.
The presence of this special “applicant-originating” grace period distinguishes the new US law from patent laws in most countries around the world but parallels similar grace periods now offered in Canada, Australia and New Zealand.
New unique exception to novelty requirement

The new law also includes a provision which is unique amongst patent laws around the world. An exception by way of an additional grace period is provided that goes beyond an “applicant-originating” grace period. Section 102(b) (1) shelters an application in cases where:
102(b)(1) (B) 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.
The protection that is provided is that “the subject matter disclosed” is to be treated as follows:
102 (b) A disclosure made 1 year or less before the effective filing date of a claimed invention under subsection (a)(1) shall not be prior art to the claimed invention
The effect of this provision is that whatever is disclosed does not qualify as prior art. Any person making a qualifying public disclosure will not have anything that was thereafter publicly disclosed by others count against a subsequent application by the person who first disclosed publicly. This benefit applies, of course, only so long as the subsequent application is made within one year and otherwise is made soon enough to qualify under the other novelty requirements of the new law.
This is virtually equivalent, for patent novelty purposes, to acquiring a US filing date.
This is a remarkable provision for which there is no precedent.
Effect of the new “publicly disclosed” exception
Disclosures by independent third parties are not covered by the self-originating grace period. Normally, if anyone publicly discloses an invention in a way that makes it “available to the public”, then no one else can obtain a patent. However, under the provisions of this remarkable new US innovation, once an inventor, a genuine inventor, has publicly disclosed an invention, then mere public disclosure thereafter by another independent inventor will not thereby automatically defeat the right of the earlier inventor to obtain a patent.
Once an inventor has publicly disclosed an invention, independent third parties will not have the power to prevent the inventor from obtaining a patent. Nor will such third parties be able to obtain a patent themselves. This is because the earlier disclosure combined with the absolute novelty requirement will be a bar against their later application. This preserves the benefit of the “absolute novelty” standard for granting patents: once you disclose an invention, no one who acts later will be able to obtaining a patent for whatever you have disclosed.
Remaining deadline for inventors

The earlier-disclosing inventor will have to file himself before a year is up from any other disclosure, made by himself anywhere. But he/she will not be prejudiced by a third-party disclosure occurring in the intervening period between the earlier inventor’s public disclosure and his filing date.
These provisions do not refer to the “first inventor” in the traditional meaning of the first person to invent worldwide. It refers to the first inventor to take action under the new law and thereby preserve his/her right to obtain a US patent. Such inventor must not have already lost the right to file for a patent because the invention has already been made available to the public by another person who is an independent third party.
Consequences

What are the consequences of these provisions?
Mere public disclosure of an invention in such a way as to make the invention “available to the public” will prevent any other person who has not yet either made a patent filing or effect a public disclosure from obtaining a valid patent. Such public disclosure will also effectively establish a US filing date for the disclosing inventor.
Key issues to be resolved
There are key questions that remain to be resolved.
What is the extent to which an inventor must publicly disclose an invention in order to, effectively, establish protection equivalent to having a filing date? Is it necessary for this disclosure to be “enabling” in the same sense as Europeans require under the language of making something “available to the public”?
When will a disclosure, for purposes of sheltering a US patent application, be effective based on the audience to whom the disclosure is made? When will a disclosure be a “public” disclosure?
Conclusion

These are issues which will give rise to years of litigation before the ground rules for interpreting these sections are worked-out. Meanwhile, the law will still be substantially workable as these difficult questions will only arise in special cases, and will not apply in respect of the bulk of applications being filed.

 

US Patent Law Reform has virtually arrived

US Patent Law Reform has virtually arrived 

With the passage by the House of Representatives on June 23, 2011 of the House version of the patent Law amendment act: “H.R. 1249, the Leahy-Smith America Invents Act“, a new US patent law is virtually certain to come into effect in approximately 18 months. All that has to be done is to reconcile the House bill H.R. 1249 with the Senate bill S 23 which is a relatively standard procedure in these circumstances.

Almost universally, this legislation has been promoted as introducing first-to-file criteria into US patent law for granting patents. It does, indeed, do that. The rationale for adopting this contested alternative to the first-to-invent system is partly to conform US law to the laws of virtually all major countries in the world, and to avoid the complexity of proceedings in which parties with competing patent applications try to show who conceived their invention first.

But the patenting requirements of the new law extend far beyond simply addressing the situation where competing applications are filed for the same invention.  This law will introduce the concept of “absolute world novelty” as a key filter for limiting the grant of a US patent.

Although this relatively strict novelty feature parallels patent laws elsewhere around the world, this new novelty standard will prove to be a substantial departure from the prior US patent law. The prior US law limited novelty-destroying activities to offers for sale or incidents of public use occurring in the United States. The only world-wide disclosures limiting the grant of a patent in the United States under the prior law have been descriptions of the invention in a printed publication. 

The key provisions of the House bill that address the referenced novelty requirements are as follows:

Sec. 102. Conditions for patentability; novelty 

(a) Novelty; Prior Art- 

A person shall be entitled to a patent unless–

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or 

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. 

(b) Exceptions- 

(1) Disclosures made 1 year or less before the effective filing date of the claimed invention- 

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– 

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) 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.

These are the provisions that address the absolute novelty requirement. Other similar provisions address the case of when two competing applications have been filed. This analysis will only discuss the above novelty requirements except to observe that section 102 (a) (2) refers expressly to the case of competing applications.

The key novelty provision is under section 102 (a) (1) which bars patenting where: “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention”.  The portion which parallels patenting standards around the world is as follows:

“the claimed invention was….available to the public before the effective filing date of the claimed invention”.

The new law carries-over the following words from the previous law, presumably to ensure that nothing can be patented in the future that would have been prohibited in the past:

“the claimed invention was patented, described in a printed publication, or in public use, on sale …. before the effective filing date of the claimed invention”.

The presence of these additional words makes the US law more strict than the laws of other countries. Something could be in public use or on sale and still not yet have been presented in a way that would make the invention “available to the public”. This is a key phrase which will be analyzed further, below.

Both of these provisions are anchored to the “effective filing date” of an application. This means the date of filing in the United States, or the date of filing in another country around the world from which priority filing rights are claimed. Priority cannot be claimed for a date earlier than one year prior to the actual filing date in the United States.

The prior US law included a one-year grace period backdating from the actual US filing date which would shelter an application from both public disclosures made by the applicant and public disclosures made by third parties, so long as the applicant could show a date of invention that was earlier than the date of the third-party disclosure. This has been called a “grace period” because the applicant is not prejudiced by disclosures made during this period, particularly his own disclosures.

The object of providing a grace period is to permit patent applicants to gain experience with their invention, including experience in public use and consultations with others, before having to file a patent application. Patent applications must include a full and “enabling” disclosure that will allow others to produce the invention once the term of the patent grant has expired. This grace period ought to allow applicants to improve the quality of their patent disclosures.

The new law also includes a one-year grace period but it does so in a different form and with a different effect. Similar to a law adopted in Canada in 1989, the one-year grace period of section 102 (b), by way of an exception to the stringency of the above absolute novelty requirement, shelters an application from:

“102 (b) (1) Disclosures made 1 year or less before the effective filing date of the claimed invention-

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–

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor;”

This provision continues the policy of allowing applicants one year to publicly disclose and test inventions before having to start the patenting process.

For those located abroad, this one year self-originating grace period extends back from the foreign filing date when a first application for the invention is made available to the public anywhere in the world. Thus foreigners will have the year preceding their priority date plus the priority year to assemble a final patent specification for filing in the United States.

For those located in the United States, this patenting process can be initiated by filing a US Provisional patent application. Such an application only lasts for one year and has to be replaced with a regular US patent filing by the end of the provisional year. This one-year delay parallels the priority year available to foreigners. In both cases, the “story” of the patent disclosure may be amended up until the time of the filing of the final, non-provisional, application.

The presence of this special applicant-originating grace period distinguishes the new US law from patent laws in most countries around the world. It, however, parallels similar grace periods now offered in Canada, Australia and New Zealand. There is a prospect that other countries will follow this initiative and adopt a similar qualified grace period.

The new law also includes a provision which is unique amongst patent laws around the world. Section 102(b) (1) shelters an application in cases where:

“102(b)(1) (B) 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.”

The key words are “publicly disclosed”. What is publicly disclosed must originate from an inventor named in the application. The protection that is provided is that “the subject matter disclosed” is to be treated as follows:

“102 (b) 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)”

The effect of these provisions is that any person making a qualifying public disclosure will not have anything that was thereafter disclosed count against a subsequent application, so long as the subsequent application is made within one year and otherwise is made soon enough to qualify under the other novelty requirements of the new law. This is virtually equivalent, for patent novelty purposes, to acquiring a US filing date.

The magic of acquiring of filing date, whether an actual US filing date or a priority filing date, is that anything that occurs after the filing date does not count against the patent application to the extent that there is a description in either of such filings that will support a claim to patent rights. When the above section says that a disclosure that is publicly disclosed by the inventor within the one year prior to an application’s effective filing date does not qualify as prior art, the effect is that whatever has been disclosed in the public disclosure is, effectively, subtracted from post-disclosure publications that would otherwise qualify as prior art. This is the same principle that applies to acquiring filing date.

This is a remarkable provision for which there is no precedent. No other country includes such a provision in their patent laws. This provision was introduced part way through the processing of the third of the four attempts to amend US patent laws that have extended over the prior eight years. The apparent intention was to protect persons such as university professors and others who might disclose their inventions to the public in an oral presentation or through release of samples or a demonstration of an invention from loss of their patent rights. The provision is not limited just to university professors, but the initiative to include this exceptional exemption originated at the instigation of the University community.

Loss of patent rights could occur by a mechanism that would lie outside the self-originating grace period. Disclosures by independent third parties are not covered by the self-originating grace period Normally, if anyone publicly discloses an invention in a way that makes it “available to the public”, then no one else can obtain a patent. However, under the provisions of this remarkable new US innovation, once an inventor has publicly disclosed an invention, then mere public disclosure thereafter by another independent inventor will not thereby automatically defeat the right of the first inventor to obtain a patent. Once an inventor has publicly disclosed an invention, independent third parties will not have the power to prevent the inventor from obtaining a patent. The first inventor will have to file before a year is up from any other disclosure, made anywhere. But they will not be prejudiced by a third-party disclosure occurring in the intervening period before the first inventor’s public disclosure and his filing date.

“First inventor” in this description does not refer to the traditional meaning of the first person to invent worldwide. It refers to the first inventor to take action under the new law and thereby preserves his right to obtain a US patent.

What are the consequences of these rather remarkable US patent novelty requirements, assuming that they will come into force in the form as presently approved?

An advantage of an absolute novelty patenting requirement is that it is not necessary to file a patent application in order to defeat the rights of others to obtain a patent. Mere public disclosure of an invention in such a way as to make the invention “available to the public” will prevent any other person who has not yet either made a patent filing or effected a public disclosure from obtaining a valid patent. The invention must be adequately disclosed to defeat filings by others. But once the standard has been met, there’s no need to file a patent application in order to prevent others from obtaining a patent. This is one of the justifications for adopting absolute world novelty.

There is no existing legislation under US law as to the meaning of “available to the public”. There is a section in the US Patent Office Manual of Practice in Examining Procedure referring to biological deposits in terms of the expression “available to the public”. But generally, this expression has not been judicially defined in the United States. Certainly it has not been defined in the context of the present proposed law.

However, significant jurisprudence has developed in Europe and elsewhere around these words since this language has been adopted in international and regional patent laws since the 1970s. Whether the US courts will follow these foreign precedents remains to be seen. But a key feature of such precedents is that for a prior disclosure to qualify as a bar to subsequent grant of a patent, the disclosure must reach the level of being “enabling”. Thus a tractor driven in a parade that has an inventive feature under the cowling does not make the invention available to the public. This will not occur until members of the public can look under the hood and actually inspect the invention to the extent that they are able to understand it. Similarly, an invention offered for sale but not yet delivered cannot be said to have been made “available to the public”. This would apply where the purchaser has not been informed as to the nature of the invention.

Ironically, both of these latter actions will be bars to obtaining a patent in the United States, as they have been bars for the last 175 years. This is due to the retention of the language in section 102 (a) prohibiting the grant of a patent where:

“102 (a) (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;”

Even the granting of a patent in a foreign country does not necessarily disclose an invention. Some foreign patents may be granted in secrecy if they relate to matters of national security. Nevertheless, the granting of a foreign patent in secrecy will defeat patentability in the United States once all of the exceptions, including the one year grace period, have been used-up.

This is an example of where the new United States law is more stringent than most foreign patent laws. It departs from the principle that patents are to be granted in cases where an invention has not yet been made “available to the public”.  A confidential offer for sale of an invention will be a bar against all others obtaining a US patent. The inventor will have one year to file.  Such a procedure would not defeat the right of a third party to file in Europe.

On the other hand, in Europe, tests have been developed by the courts which have ruled that the disclosure of an invention to a single individual who is under no duty of confidentiality qualifies as making an invention “available to the public”. Yet, in another case, when photographs of a fold-down staircase were shown to a politician by the manufacturer and photographs of the politician standing before the staircase were published in a local newspaper, it was held that the invention had not been made “available to the public”. This was because features of the invention were not apparent in the mechanism as photographed and, presumably, in the portions of the staircase shown to the politician.

Some careful and deep thought will have to be given by the US courts in developing their standards for giving meaning to the expression: “available to the public”.

The foregoing has addressed the issue of spoiling the ability of others to obtain a patent by making the requisite degree of disclosure. A separate but complementary issue is the extent to which an inventor must publicly disclose an invention in order to, effectively, establish protection equivalent to having a filing date. This requires giving careful attention to the intended meaning of the following words:

“102(b)(1) (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor…”

Is it necessary for this disclosure to be “enabling” in the same sense as Europeans require under the language of making something “available to the public”? The word “disclosed” is used in the present US patent law under section 102 (e) whereby applicants are entitled to claim the benefit of anything “disclosed” in a prior US Provisional patent application, if other requirements are met. But throughout the entire existing US statute, the word “disclosed”, although appearing many times, always does so in the context of referring to a document. How much activity, without reducing information to written form, will constitute a disclosure?

Then there is the further issue of the word “public”. When will a disclosure, for purposes of sheltering a US patent application, be effective based on the audience to whom the disclosure is made? Disclosures to the family are not public, but what about disclosures at a wedding? Many public disclosures are evanescent. People make statements orally at meetings but no one remembers what was said afterwards. Perhaps a tape recorder may be running but if nobody understood, or were unable to hear, what was being said at the time the statement is made, can it be said that such an event constitutes a case when something was “publicly disclosed”. Can there be a different standard for “publicly disclosed” as opposed to making something “available to the public”?

These are all issues which will give rise to years of litigation before the ground rules for interpreting these sections are worked-out. Meanwhile, the law will still be substantially workable as these difficult questions will only arise in special cases, and will not apply in respect of the bulk of applications being filed.
 

US patent law reform – Swearing-Back: Dealing with colliding filings under HR 1249 –

 

With the Thursday, April 14, vote of the Judiciary Committee of the House of Representatives in favor of the America Invents Act (Patent Reform Act of 2011), House bill HR 1249, US patent law reform moves forward.  This markup fails to deal, however, with an issue that was overlooked in the Senate bill. There may still be an opportunity for amendment when the House bill and the Senate bill S. 23 are reconciled
 

First-to-file-or-publish system
 

It has been said that “swearing- back” will no longer be required under the new US first-to-file legislation. Well, actually, this proposed law is not a classic first-to-file system. This new law, as pending both before the House and as passed by the U.S. Senate is a “first-file-or-publish” system. But some background fundamentals must be addressed first, before dealing with the subtleties of this new concept and the survival of swearing-back practices.
 

Under the new law, even if you are a first inventor in the worldwide sense, if someone else publishes your invention in such a way as to make it available to the public, in any manner, anywhere in the world, and does so before you have filed a patent application yourself for the United States, then it will be too late to obtain a US patent. This may seem hard on inventors, but the new law reflects the policy that patents are issued in exchange for the disclosure of the idea of an invention. If someone else has already disclosed an invention publicly, then you’ve got nothing left to bargain with that would justify your obtaining a US patent. That’s the gist of the new law.
 

Even your own public disclosure can count against you, whether you disclose something yourself or someone else who learns about the invention from you makes the disclosure. This will occur if you allow more than one year to pass. However, your own prefiling public disclosures, whether released by yourself or by others who learn about the idea from you, will not count against you so long as you file within one year from the first of such disclosures.
 

Note, if you rely upon this one year applicant-originating grace period, you are running the risk that an independent source will publish your invention before you file. That would terminate your right to obtain a patent. But if your idea hasn’t been publicly disclosed by anyone else before you file, and if you yourself didn’t disclose your own idea for more than a year prior to your filing date, you can still proceed to obtain a US patent. That’s all part of the new law.
 

Opportunity for swearing back

Well, in this context, where does “swearing-back” come in?    Swearing-back under the existing first-to-invent law deals with the case where someone else has published your invention in the year before you’ve made your US application. The patent examiner is interested in knowing whether you were a first inventor or a second inventor. If you were a second inventor, then your application would be refused.
 

You are therefore asked to “swear-back” of at least the publication date that has come to the examiner’s attention. The degree of evidence you have to provide demonstrating when you had made your invention has varied over time. Sometimes a merely declaration with the little detail has been accepted by examiners. On other occasions, a degree of supplemental evidence in the form of exhibits has been required.
 

It has been said that swearing-back will no longer be required under the new law.  But this is not true.  Senate bill S. 23 as well as HR 1249 both deal with competing applications in the same manner. First we can deal with the situation where two applicants file applications containing conflicting disclosures.
 

Two applications containing conflicting disclosures

If the later-filing applicant attempts to claim what is disclosed in the earlier application, or anything that is obvious in view of what was disclosed in the earlier application, then the second application will be barred, subject to the exceptions which will now be addressed.    (In reading the section below, Subsection (a)(2) stipulates that the first-to-file will normally prevail).

Both bills before Congress contain the following provisions:
 

102 Conditions for patentability; novelty
(b) Exceptions-
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS- A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if–

(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), 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;

Here’s the effect of these two exceptions (A) (B).
 

Shelter from derived prior filings
 

Subsection 102(b)(2)(A) shelters an applicant from his own ideas when someone else files an earlier application which incorporates knowledge of the invention which was derived from the other second-to-file party. Since this issue of “derivation” may be contentious, section 135 specifically allows an administrative body, the Patent Trial and Appeal Board, to hold proceedings under Section 135 and rule on whether a derivation has occurred.
 

Shelter from independent prior filings

 

Subsection 102(b)(2)(B) shelters an applicant who is later to file from a disclosure made by an independent inventor in an earlier-filed application if:

(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), 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);
 

This means that an applicant can effectively achieve a filing date that will prevail in the case of conflicting applications for the same invention by having “publicly disclosed” the subject matter that otherwise would be prejudicial and would count against him in the equivalent to a classic Interference Proceeding. This effective filing date is obtained by having “publicly disclosed” the subject matter of an invention.
 

This is an extraordinary provision for which there is no precedent in any patent law around the world. Additionally, no one is commenting on this provision. It’s been swept-up under the rubric “first-to-file”. It’s even being ignored, or neglected, by commentators who are analyzing the derivation provisions of the exceptions to novelty requirements under section 102(b), but not this feature.
 

This section 102(b)(2)(B) will have the effect of keeping swearing-back alive and well under the new US patent law system. It will have to happen this way:
 

Example of swearing-back - prior competing filings
 

A person who is second to file, having been preceded by an independent inventor who filed first, will be able to show that the subject matter in the earlier-filed application that is prejudicial had been “publicly disclosed” by the applicant who filed later. If this is done, then what was publicly disclosed will be subtracted from the disclosure of the earlier filed application thereby reducing its barring effect. This is equivalent to swearing-back.
 

Example of swearing-back - prior public disclosures
 

A parallel procedure will arise in respect to public disclosures made by independent parties prior to an applicant’s filing date that would otherwise qualify as prior art. Exceptions provided by Sections 102(b)(1)(A) and (B) parallel those reproduced above for conflicting applications. Again, an examiner citing a prefiling public disclosure by a third-party will have to give the applicant an opportunity to show either that the cited disclosure was derived from the applicant, or that the applicant had publicly disclosed the subject matter prior to the date of the cited disclosure.  In this way the prior public disclosure will be removed as a prior publication bar.
 

Concerned parties to the issue

Of these two proceedings, the last one described relating to prior public disclosures is essentially an ex-party exercise. Exchanges on the issue will occur only between the applicant and an examiner. But the competing filings case, when there are two conflicting applications, will involve two equally interested parties: the first and second applicants.
 

Examiner’s response

If an examiner were to cite an earlier application against a later filing, and if the second-to-file applicant responds by producing evidence of having himself previously publicly disclosed the subject matter being relied on as prior art at an earlier date than the first applicant’s filing date, then the examiner will have to withdraw any refusal based upon such subject matter. But having received evidence that such subject matter was previously publicly disclosed, the examiner will have an obligation to present evidence of such public disclosure to the party who filed the first application. Such public disclosure may count as a prior art bar against the first to file applicant.
 

Now we have a situation where the first party to file is having his application challenged based on an allegation made by the second-to-file applicant that the latter applicant had published first. This is not an ex parte situation.
 

Resolution of two-party disputes
 

Under section 135, the Patent Trial and Appeal Board will have jurisdiction to decide whether or not a person who files first in respect of two competing applications had derived knowledge of the invention from the later filing applicant. This board will have jurisdiction as follows:
 

(a) Institution of Proceeding- An applicant for patent may file a petition to institute a derivation proceeding in the Office. The petition shall set forth with particularity the basis for finding that an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed. Any such petition may be filed only within the 1-year period beginning the date of 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, shall be made under oath, and shall be supported by substantial evidence. Whenever the Director determines that a petition filed under this subsection demonstrates that the standards for instituting a derivation proceeding are met, the Director may institute a derivation proceeding. The determination by the Director whether to institute a derivation proceeding shall be final and nonappealable.
 

(b) Determination by Patent Trial and Appeal Board- In a derivation proceeding instituted under subsection (a), the Patent Trial and Appeal Board shall determine whether an inventor named in the earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed.

The same board should also have jurisdiction to resolve whether the second to file applicant had previously publicly disclosed the subject matter claimed in the second application in such a way as to exclude parallel content in the first application from qualifying as prior art. Equally, the board should have jurisdiction to decide whether the first applicant should have his patent application rejected based upon a prior publication by the second applicantA similar section to the above section to resolve such issues could be provided as follows:
 

(a) Institution of Proceeding- An applicant for patent may file a petition to institute a public disclosure proceeding in the Office. The petition shall set forth with particularity the basis for finding that an inventor named in a later application either has or has not publicly disclosed subject matter contained in an earlier application in accordance with Subsection 102(b)(2)(B). Any such petition shall be supported by substantial evidence. Whenever the Director determines that a petition filed under this subsection demonstrates that the standards for instituting a public disclosure proceeding are met, the Director may institute a public disclosure proceeding. The determination by the Director whether to institute a public disclosure proceeding shall be final and nonappealable.

(b) Determination by Patent Trial and Appeal Board- In a derivation proceeding instituted under subsection (a), the Patent Trial and Appeal Board shall determine whether an inventor named in a later application either has or has not publicly disclosed subject matter contained in an earlier application.
 

Amendment to final legislation
 

This issue should be addressed before this legislation is finalized.

Finally, a New Proposed US Patent Law, but with strange provisions!

The U.S. Senate has now passed its new patent bill, S. 23Numerous comments have been made, particularly about the first-to-file revisions of this law. However, no one is commenting on the effect of the following clauses in amended section 102:

102(b) Exceptions-

(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- 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–

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) 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.

Subparagraph (B) has the following result:  If you disclose your invention to the public, or more precisely if the subject matter of your later patent application has been previously “publicly disclosed”, then you effectively have established your US filing date.

This is an unusual provision in patent law, indeed unique. But it appears to be good policy. It’s true; anyone relying on this provision would lose their rights in Europe. But if an inadvertent disclosure were to occur as through a public use or a public presentation, then if that disclosure meets the requirements of this section, the applicant would have thereby locked-in their right to obtain a US patent. This would be true, of course, only so long as they do not otherwise violate the one-year deadline to file based their own personal disclosures which have made the invention available to the public. This assumes, as well, that there has been no prior disclosure by a third-party.

This provision repairs a flaw in the present Canadian law. Under the Canadian patent statute, an inventor who puts his invention on the market and relies on the one-year grace period before filing in Canada, can still lose his patent rights if an independent inventor makes the invention “available to the public” before the inventor has filed his patent application. In other words, it’s still a “race to the patent office” as between strangers in Canada.

The exception of Section 102(b)(1)(B) provides relief from that pressure. Effectively, publicly disclosing your invention will shield any application from after-arising prior art. This is equivalent to obtaining a filing date.

Another way to look at the exception is that it provides a presumption that anyone who subsequently publishes an invention is assumed to have acquired knowledge of the invention from the inventor. This would bring such a disclosure within the scope of Section 102(b)(1)(A). This Section 102(b)(1)(A) is the classic Canadian pioneered “one-year inventor originating grace period”.

While this section may be good policy, it may still have a flaw that could be corrected before the House.

What does “publicly disclosed” mean? The main novelty provision of section 102 uses the expression “available to the public” to characterize fatal prior art. This has been interpreted in Europe and Canada as requiring that a prior disclosure must be “enabling” in order to be effective as prior art. If a tractor is driven around town but doesn’t make the invention understandable, then this enablement requirement means that the invention has not been made “available to the public”. Will the same requirement of enablement be imported into the expression “publicly disclosed”?

This uncertainty could be dispelled if, before the House, the bill where amended as follows:

102(b)(1)(B) 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 so as to make the invention available to the public.

On the other hand, the legislators may not wish to commit to such an interpretation. Perhaps they want the Courts to resolve this issue rather than take the responsibility themselves.

To make the amendment proposed would raise the standard required when something is “publicly disclosed” in order for such an event to serve as a shield against after-arising prior art. Perhaps the legislators do not want to be the ones that stipulate for an increase standard.

Under the existing law, once a conception of an invention has occurred and the invention has been reduced to practice, (including reduction to practice under confidential circumstances), the inventor does not have to make a public disclosure that arises to the standard of being “enabling”. He/she can delay filing up to the limit that the invention has not been suppressed or abandoned.  A delay of one year is probably not unreasonable if it fits within the statutory one-year grace period.

 Under this new provision of section 102(b)(1)(B), the sheltering of the invention will live or die according to whether an invention has been “publicly disclosed” to the standard that the law requires.

To clarify or not to clarify, that is the dilemma that the House must face in reviewing its equivalent to S. 23.

US Supreme Court case: Microsoft Corporation versus i4i Limited Partnership et al

Victor Krichker and Maya Medeiros of Bereskin & Parr LLP have posted the following remarks concerning the above case on the Bereskin & Parr website:
 

“December 7, 2010

U.S. Supreme Court will hear Microsoft’s appeal of a judgment awarded to Toronto-based i4i
 

The Supreme Court of the United States (SCOTUS) will hear Microsoft’s appeal to overturn a judgment finding that Microsoft Word infringes U.S. Patent Number 5,787,449 held by Toronto-based i4i. The judgment awarded US$290 million in damages to i4i and issued a permanent injunction barring Microsoft from selling infringing versions of Microsoft Word. The injunction has been stayed pending the appeal. The judgment is said to be the largest patent infringement verdict ever to be affirmed on appeal.”

 

This case is jurisprudentially important because it will review the standard for testing the validity of an issued US patent, namely whether such testing should proceed on the basis of the standard of a “preponderance of evidence” as opposed to a standard of “clear and convincing evidence”, depending on whether prior art was reviewed by the US patent office.
Here is a short characterization of the US patent under appeal taken from the face of the patent:
 

“United States Patent 5,787,449    Vulpe, et al.  July 28, 1998
Title:  Method and system for manipulating the architecture and the content of a document separately from each other
Abstract
A system and method for the separate manipulation of the architecture and content of a document, particularly for data representation and transformations. The system, for use by computer software developers, removes dependency on document encoding technology. A map of metacodes found in the document is produced and provided and stored separately from the document. The map indicates the location and addresses of metacodes in the document. The system allows of multiple views of the same content, the ability to work solely on structure and solely on content, storage efficiency of multiple versions and efficiency of operation.”

 

This present posting is about the Canadian patent based on the same invention.
The corresponding Canadian patent CA2150765 is available here.
The administrative Status of this Canadian patent is here.
In other words, this Canadian patent lapsed beyond recall as of June 1, 2004 for nonpayment of a $100 annual Canadian maintenance fee!
The maintenance fee history over the previous years shows that the annual fee was always paid on the last day. This could be interpreted as the existence of a condition of financial stress on the part of the patent owner. However, payment on the very last day may be indicative of something else, possibly considerable ambivalence as to whether the fee should be paid at all.
No official Agent of Record is shown as being associated with this patent on the CIPO webpage.
What does this all mean? We can only guess at the drama behind the facts that have led to such an enormous judgment for damages in the United States while the Canadian patent was allowed to lapse.
 

Fourth time lucky? The US patent law reform Saga continues

With the conclusion of the midterm 2010 elections, the111th Congress came to an end without completing the processing of the third attempt to effect patent law reform. Now, early in the 112th Congress, Senators Patrick Leahy, Orrin Hatch and Chuck Grassley have tabled in the U.S. Senate bill S. 23, a revised version of the earlier bill, which they are now determined to see enacted.

Entitled the ‘‘Patent Reform Act of 2011’’ this bill continues the policies of the earlier proposed legislation but with a significant improvement in the drafting language. Key provisions are those addressing patent novelty and the conditions for patentability. They are short and read as follows:

(b) CONDITIONS FOR PATENTABILITY.—
(1) IN GENERAL.—Section 102 of title 35, United States Code, is amended to read as follows:
 

‘‘§ 102. Conditions for patentability; novelty
‘‘(a) NOVELTY; PRIOR ART.—A person shall be enti1tled to a patent unless —
‘‘(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
‘‘(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

‘‘(b) EXCEPTIONS —
‘‘(1) DISCLOSURES MADE 1 YEAR OR LESS BE FORE THE EFFECTIVE FILING DATE OF THE
CLAIMED INVENTION — 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 —
‘‘(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
‘‘(B) 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.
‘‘(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if —
‘‘(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
‘‘(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), 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;

These short paragraphs address the heart and soul of the patent legislation. They, along with section 103 on “obviousness”, define what can and cannot be patented in terms of novelty.  The passages are short and the wording is greatly improved over what was presented earlier.  But their effects are profound.

 

Sections 102(a) and (b) are very straightforward. Section 102(a) commences by barring the grant of a patent which does not pass the test of “absolute world novelty” (subsection 102(a)(1)). And section 102 (a)(2)) bars the grant of a patent which is based on a second application, as between strangers, to be filed for the same invention. This latter provision implements the much discussed and heavily contested first-inventor-to-file system.  Notably, hardly anyone is addressing the impact of the “absolute world novelty” criterion of the first provision.

Then the drafting style is to make a number of exceptions which allow patenting in the case of inventions that are affected by actions of the inventor occurring in the one year prior to an applicant’s effective filing date. This is done through subsections102 (b) (1) and (2). These two subsections deal respectively with public disclosures originating from the patent applicant (actually, originating from one or more of the inventors named in the application); and exceptions to the first-to-file principle in respect of conflicting filings.

Section102 (b)(1)(A) introduces a one-year inventor-originating grace period paralleling that in force in Canada since 1989 and now adopted in Australia and New Zealand. There is nothing remarkable about this provision; it should be adopted in Europe as well.

Section102 (b)(1)(B) introduces a remarkable and unparalleled new provision into patent law: the ability of an inventor to establish an effective filing date by:
-       disclosing publicly within the year prior to the effective filing date, the subject matter (to be claimed) before any independent third party makes a similar public disclosure.

This privilege extends not only to the inventor or a joint inventor but also to a disclosure made by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
This is equivalent to establishing a filing date because it prevents the subject matter of the disclosure from counting against the patent applicant on the basis that it is prior art. This section clearly excludes from consideration any prefiling disclosures made by others to the extent that the inventor has already made an earlier disclosure.

There is no precedent for such a provision in a first-to-file system anywhere in the world.

Apparently, this provision is intended to soften the blow on researchers and inventors who have inadvertently disclosed their invention publicly. Having done so, they do not have to face a “rush to the patent office”. If their disclosure has been thorough and was novel at the time, they have up to one year from the date of publication of their concepts to file their application before the US patent office.  This is similar in effect to the privilege that inventors have under the present first-to-invent system in the United States: the privilege of delaying up to one year from their date of conception before filing a US application.

But there are warning flags around this privilege. It does not apply to exclude the effect of prior third-party public disclosures that make the invention “available to the public”.  To that extent, the new law will still be an absolute world novelty system. And furthermore, the protection arising from this privilege of effectively filing by publicly disclosing will probably only be co-extensive with the content of the disclosure that is actually made to the public. It is likely that the courts will require that this disclosure be enabling. That is, the disclosure must be sufficient to enable others to build the invention.

This enablement requirement has been judicially engrossed on the standard of “available to the public” which operates as the novelty requirement in Europe. An invention is not considered in Europe to have been made available to the public if the disclosure is not sufficient to enable others to put the invention into effect. Section 102 (b)(1)(B) uses the different language of “publicly disclosed”.  Therefore the courts will be faced with deciding how much disclosure is sufficient to accord an applicant the benefit of this section. There is a good prospect that they will adopt the same standard: the disclosure must be enabling.  The alternative is that the disclosure must demonstrate that the inventor was “in possession of the invention” at the time that the public disclosure that was made.

Sections102 (b)(2)(A) and (B) deal with issues before the patent office. They parallel the effects of sections 102 (b)(1)(A) and (B) but apply in respect of contests that occur in the patent office between two parties that file for the same invention. Applicants are sheltered from references to their own originating concepts appearing in prior filed applications made by others, per Sections102 (b)(2)(A); and applicants are sheltered from independently originating disclosures appearing in prior filed applications, to the extent that the application’s inventor had publicly disclosed the same subject matter before the filing of the independent, third-party application, per Sections102 (b)(2)(B).

These are remarkable provisions. It will take years before the jurisprudence establishing their full meaning will be reasonably developed. But it does appear that a compromise has been presented which goes part way to meeting the concerns of those who would prefer that America retain its first-to-invent patenting system.

How can a Disclaimer broaden a patent claim???

Hershkovitz v. Tyco Safety Products Canada Ltd

Canadian Federal Court of Appeal

Sometimes decisions are made by the courts that make you angry. And other times they just make you sad. This is a case that falls into both categories: Hershkovitz v. Tyco Safety Products Canada Ltd. 2010 FCA 190 Date: July 19, 2010

Patent 2,169,670, relates to an electronic circuit known as a telephone line coupler. A telephone line coupler is used to connect electronic equipment, such as a telephone or alarm system to a telephone line, while providing electrical isolation. The electrical isolation is necessary to protect equipment from power surges and unwanted signals. The electrical isolation is achieved by using optical-electronic components called “opto-couplers”. There’s no need to examine this patent further other than to observe that the patentee, by way of a “disclaimer” introduced into the scope of coverage of the claims the requirement that the following additional features must be present:

“(1) a receive opto-coupler (2) connected (3) in series (4) with the transmit opto-coupler [means] (5) on the line side (6) to draw a minimum of current (7) to place a light-emitting diode (8) of the receive opto-coupler (9) in an operational range.

These features were fully identified in the disclosure as originally filed.

It is perhaps important to note that the Trial Judge then added the observation:

“The Court notes that these newly added elements are considered by the inventor himself as being (1) inventive elements and (2) resulting in new combinations…”

an observation apparently adopted not only by the Trial Court in making its ruling but by the Court of Appeal as well. The implication is that these words pointed the scope of patent coverage in a new direction.

Focusing on the decision in the Court of Appeal, which perpetuates the errors made in the court below, the appeal judgment addressed the first issue as being: Was the disclaimer invalid because it added new inventive elements to the invention?

The Appeal Court found no error in the Trial Court’s decision that the appellant’s disclaimer broadened the scope of the patent by adding new inventive elements to it. On this basis, the disclaimer was held to be invalid. Worse, the Appeal Court endorsed the methodology of the Trial Court, namely of proceeding by construing the claims in the patent both before and as modified by the disclaimer, and then comparing the two in order to conclude that the claim had been broadened.

Before addressing why this is an erroneous approach, it should be observed that the Appeal Court decision makes the following observations on the nature and fundamental principles of patent law:

“At its essence, the patent system is a bargain between the public and inventors”
“An inventor can obtain a patent for any “new and useful art, process, machine, manufacture or composition of matter”….. The patent gives its holder, the patentee, a time-limited exclusive right to make, construct, use and sell the invention: section 42 of the Act. There is a quid pro quo.
“A person infringes a patent by performing all of the essential elements found within the claims of the patent. The essential elements of a claim are all the elements required for the invention in the claim to function as contemplated by the inventor. Put another way, those elements that can be substituted or omitted without having a material effect on the invention’s function are non-essential. Clearly, adding essential elements to a claim narrows it.
“To be novel the invention must not have been previously made known to the public.
“…an inventor can only claim that which he invented. If an inventor claims more than was invented, the subject-matter of the patent will be too broad. This makes the bargain unfair – the inventor ends up with the exclusive right to exploit subject-matters not invented and not disclosed to the public. Simply put, patents cannot be overbroad.

“. . . a patentee may later discover that part of the invention falls short on one of the three criteria for patentability.

“Sometimes the patentee can address the deficiency upon discovering that part of the invention falls short on one of the three criteria for patentability. Where the deficiency is as a result of a mistake, accident or inadvertence, the patentee may renounce that part of the invention that falls short. …. Renunciation is accomplished by filing with the Patent Office a document called a “disclaimer”: section 48 of the Act. Section 48 provides as follows:

48. Patentee may disclaim anything included in patent by mistake

(1) Whenever, by any mistake, accident or inadvertence, and without any wilful intent to defraud or mislead the public, a patentee has

(a) made a specification [i.e. the claims and disclosure found in the patentee's patent application] too broad, claiming more than that of which the patentee or the person through whom the patentee claims was the inventor, or (b) in the specification, claimed that the patentee or the person through whom the patentee claims was the inventor of any material or substantial part of the invention patented of which the patentee was not the inventor, and to which the patentee had no lawful right,

the patentee may, on payment of a prescribed fee, make a disclaimer of such parts as the patentee does not claim to hold by virtue of the patent or the assignment thereof.

“The filing of a disclaimer narrows the scope of the patent. The narrowing of the scope of the patent happens automatically upon filing the disclaimer: the Patent Office does not have to assess and approve the disclaimer. As long as the disclaimer is in the prescribed form, the Patent Office registers it.

“When the patentee files a disclaimer, the scope of the patent exclusivity enjoyed by the inventor is reduced.
“Disclaimers that broaden the scope of a patent are invalid.
“In the view of the Federal Court [trial division], this was an invalid broadening of the scope of the patent through disclaimer.

“[34] In this Court, the appellants cast their challenge to the Federal Court’s ruling on this point very narrowly. They challenged the Federal Court’s finding that the disclaimer introduced, as a new inventive element, a connection between the receive opto-coupler and the transmit opto-coupler. However, even if the Federal Court were wrong on that, its finding that the disclaimer improperly introduced a number of other new inventive elements would remain. For example, in this Court, the appellants did not challenge the finding that “a minimum of current to place a light emitting diode of said receive opto-coupler in an operational range” broadened the scope of the patent. They failed to challenge any of the other elements that the Federal Court described in the above passage, which, in its view, broadened the scope of the patent. Whether or not the appellants’ narrow submission is correct, it does not matter in the end result: the Federal Court has found that the disclaimer, by broadening the original claims in the patent, is invalid. Were it otherwise, parties could use disclaimers to broaden their patents and obtain increased rights of exclusivity over those elements, thereby changing the overall bargain and circumventing the oversight of the Patent Office.

“[35] Because of the rather narrow focus of the appellants’ arguments concerning the above passage, it is not necessary for this Court to examine each of the nine inventive elements identified by the Federal Court and assess whether they are indeed inventive elements. In some cases, this might be necessary. There is a distinction between inventive elements and essential elements. In a disclaimer, one cannot add inventive elements, as that will broaden the scope of the patent. But adding essential elements can narrow the scope of the patent; as mentioned in paragraph 11, above, the more essential elements there are in the patent’s claims, the narrower they get.”
[End of quotations from Court decision]

 

This ruling is a disaster. It not only does great damage to the provisions in the Act that permit a patentee to file a disclaimer, but it does so on the basis of a logical reasoning which is seriously deficient.

Adding new limitations to a claim does not broaden the scope of a patent monopoly. The claim has a scope before the new limitations are added, and after the new limitations are added that scope has been reduced because anything not including the new limitations is now excluded. A properly formulated disclaimer can never broaden the scope of coverage of a patent.

A key feature of a disclaimer is that it is available in cases where a specification [i.e. the claims and disclosure found in the patentee's patent application] has been made too broad, claiming more than that of which the patentee or the person through whom the patentee claims was the inventor. (Reference to “more than that… the person… was the inventor” is old-fashioned language meaning that the subject claims covered pre-existing prior art. Hence such person was not the “inventor”.)

By permitting disclaimers, a patent claim that violates the Golden Rule of patent law (by extending to cover the prior art) can be repaired by truncating its scope.

There are two ways by which the scope of a patent claim can be limited. One is to declare that claim coverage specific to a prior art configuration that has been discovered after the scope of the claims has been settled through examination are not to be covered by the claim – coverage of such specific prior art is disclaimed. The other way by which the scope of a patent claim can be limited is to stipulate that coverage is to extend only to embodiments of the invention having a specific feature that is not present in the prior art. Properly, the specific feature must also be identified in the patent specification as being available to serve as part of the invention to be covered by the patent. Examples would be appropriate.

Example 1

Claim: I claim a pencil having an eraser attached to the end of the pencil.

Prior art: a pencil together with an eraser having a hole in the eraser which is fitted over the end of the pencil

Disclaimer: I disclaim the case of a pencil together with an eraser having a hole in the eraser which is fitted over the end of the pencil.

Example 2

Claim and prior art as above.

Disclaimer: I disclaim the cases of all pencils not having a brass sleeve fitted at the end of the pencil to hold the eraser in place.

In the first case, the disclaimer is specific to an example of prior art. In the second case the disclaimer adopts a limitation taken from the disclosure in the original patent filing and makes this a requirement for something to fall within the scope of the claim in order to infringe. The first example, whether appropriate or not, is not permissible under the patent rules. The rules stipulate that a disclaimer, other than the entire cancellation of a claim, must be formulated according to the following statement:

“The patentee disclaims the entirety of claim with the exception of the following:
http://laws.justice.gc.ca/eng/SOR-96-423/page-5.html#anchorsc:1

Following this procedure, the original claim may then be set out in its entirety with further limitations being added to it. This is the well-known procedure in patent law of narrowing the scope of a patent claim.

How could the Court invalidate the disclaimer on the basis that: “the disclaimer improperly introduced a number of other new inventive elements….” and “the Federal Court (trial division) has found that the disclaimer, by broadening the original claims in the patent, is invalid”? Not only did the Court on Appeal refuse to depart from the decision of the Trial Division but they also endorsed this by adding:

“the Federal Court has found that the disclaimer, by broadening the original claims in the patent, is invalid. Were it otherwise, parties could use disclaimers to broaden their patents and obtain increased rights of exclusivity over those elements, thereby changing the overall bargain and circumventing the oversight of the Patent Office.”

The Court then went on to make the novel and strange observations that:

There is a distinction between inventive elements and essential elements. In a disclaimer, one cannot add inventive elements, as that will broaden the scope of the patent. But adding essential elements can narrow the scope of the patent; as mentioned in paragraph 11, above, the more essential elements there are in the patent’s claims, the narrower they get.”

This new distinction seems to be related to the earlier statement taken from the Supreme Court of Canada decision in Free World Trust v. Electro Sante Inc., [2000] 2 S.C.R. 1024, 2000 SCC 66 that:

“A person infringes a patent by performing all of the essential elements found within the claims of the patent. The essential elements of a claim are all the elements required for the invention in the claim to function as contemplated by the inventor. Put another way, those elements that can be substituted or omitted without having a material effect on the invention’s function are non-essential. Clearly, adding essential elements to a claim narrows it.”

This parsing of claims into essential and nonessential elements is derived from the British House of Lords Catnic decision, Catnic Components Ltd v Hill & Smith Ltd (1982) R.P.C. 183 and the subsequent UK Court of Appeal Improver decision, Improver Corporation v Remington Consumer Product Limited [1990] F.S.R. 181. This adoption of the concept of essential and nonessential elements was made without reference to the subsequent British House of Lords decision in Kirin-Amgen v Hoechst Marion Roussel [2004] UKHL 46 (2004-10-21)

http://en.wikipedia.org/wiki/Kirin-Amgen_v_Hoechst_Marion_Roussel
http://www.claytonutz.com/publications/newsletters/life_sciences_insights/20050715/oh_my_lord-the_house_of_lords_clarifies_uk_patent_law.page

which clarifies the intent of the Catnic decision and nullifies the parsing of claims into essential and nonessential elements as the proper method for claim interpretation. That distinction was in reality a residue from the pre-Catnic law principle that the Doctrine of Equivalents cannot operate at the point of invention.

Not only does the present Court of Appeal decision maintain the distinction between essential and nonessential elements in a patent claim, but it also introduces the concept that claims may add inventive elements as well as essential elements, vis: There is a distinction between inventive elements and essential elements. In a disclaimer, one cannot add inventive elements, as that will broaden the scope of the patent. But adding essential elements can narrow the scope of the patent; as mentioned in paragraph 11, above, the more essential elements there are in the patent’s claims, the narrower they get.” The reality is that adding limitations to a claim cannot broaden its scope. This analysis is hopelessly wrong.

A further effort might be invested in determining whether there were good policy reasons for reaching the same decision on other grounds such as the inventor’s understanding at the time of the patent grant, but for now, we have to decide whether to be either angry or sad at the direction that a decision such as this will point the law in the future.

David J. French
Ottawa, Canada

Patenting Software in Canada

                                        Patenting Software in Canada

While the world waits for the US Supreme Court decision in the Bilski case, the Canadian Patent Office is going forward with establishing its policies as to when patents can be granted for software inventions in Canada. They have done so by publishing a draft revision to the Patent Office manual that addresses this issue.

The Canadian Patent Office publishes the Manual of Patent Office Practice – MOPOP – to serve as a guide for both examiners and the public regarding patenting in Canada. On June 16 CIPO began its consultation on a draft revision to Chapter 16 of the MOPOP which addresses the subject of “Computer-Implemented Inventions”.  CIPO invites comments in response up until August 19, 2010. Thereafter, the response will be evaluated in the development of a final policy to be adopted regarding computer-implemented inventions. Note: Comments submitted will be posted on CIPO’s website for public viewing.

This draft chapter is 41 pages long and is available at this link:
http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr00758.html

The issue addressed goes to the very heart of the patent system: What sort of things should be patentable. Policy wise, patents should probably be granted for things that need to be encouraged to come into existence and would be less likely to arise without the incentive of a patent right to motivate human initiative. In the past, stemming from the Statute of Monopolies in 1624, patents were intended to introduce “new manners of manufacture” into the land. In the last hundred years, the premise for the granting of patents has shifted from establishing new enterprises to encouraging the disclosure of inventive concepts. But we can still ask, inventive concepts regarding what types of things?

The Canadian statute, borrowing from the US Patent Act of 1836, recites that patents are to be granted for “any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter”. This is the definition of an “invention” under the Act. This statutory language was last addressed by Parliament in 1936. There’s no doubt that the issue raised by Chapter 16 of the MOPOP was far from the minds of any Member of Parliament at the time. 

The issue is: to what extent can computer-implemented inventions be said to qualify under the definition of “invention” and therefore be qualified for the granting of a patent in Canada.

As long as hardware is involved, there is virtually no doubt that a patent can be granted if the other requirements for patentability, namely novelty and unobviousness, are met. The more difficult issue arises when the novelty resides in the manner of organizing or treating information, or surrogates for information, in the form of electric signals. This is the strength of computers. The information that they sort and analyze is valuable because it represents an analog to the real world. The mere fact that a computer process is used to carry out some other tangible activity, such as adjusting the color of paint in a paint production line, should not disqualify the overall process from being patented. The difficulty arises when the invention, the purported invention as presented by the patent applicant, resides in the processing of the information itself. An example may prove helpful.

One of the most powerful innovations in communication and computer technology was the conception of the checksum digit as part of computer words. Originally, when computers used eight bit words based on a string of eight binary values of zero or one, one digit was reserved to be used to indicate the “parity” of the other seven digits. Thus if a computer word consisted of: 11101010, the parity of the last seven digits is established by adding the digits and checking whether the result is an even or odd number:  1 + 1 + 0 + 1 + 0 + 1 +0 =  4.  As 4 is an even number, by convention its parity is considered to be 1.  Accordingly, the first or checksum digit is given the value: 1.

There are actually numerous mathematical algorithms that can be implemented to carry out this type of function: http://en.wikipedia.org/wiki/Check_digit

They all serve to catch errors arising from the corruption of information that is being transmitted. Within a computer, this transmission is occurring millions of times a second and it’s important to catch errors when they occur. This checksum parity check doesn’t catch all errors;  two errors in one word may cancel out.  But when a single error has occurred, and the checksum digit doesn’t match, a computer circuit can be programmed to ask for the retransmission of the corrupted data until apparently valid information is received.

While this example has been given in respect of the transmission of an electronic message in binary form, it would be equally applicable to the semaphore signalling systems of earlier times. At regular intervals, a flag signal could be raised that reflects on the nature of the earlier signals. Thus the concept which constitutes a valuable advance in signalling can be divorced from the mechanical way in which it is implemented.

Should such a process be entitled to the grant of a patent?
There are two approaches.  One approach is to determine whether the new concept can be fitted within the words of the statute.  On its face, almost anything could qualify as a new and useful “art”.  But the meanings of words in the statute are constrained by the traditions of judicial interpretation.  Another approach is to go to a higher level and ask the policy question: “Is this a case where patents should be granted to encourage innovation to occur that would be less likely to arise without the incentive of a patent right to motivate human initiative?”  Some would quickly answer: “of course”, relying on the presumption that anyone who discloses a new and useful gift to humanity deserves a reward.  On the other hand, a sophisticated review of the modern economy may show that there is sufficient incentive already for people to conceive of more efficient ways to communicate, analyze and manipulate information.

Allowing that innovations that include a mechanical component are accepted as being patentable, creative patent agents can, and have in the past, conceived of very cunning ways of defining an inventive concept so that it appears to apply to something tangible. Even the semaphore system operates on the basis of flags. 

A further policy question therefore arises as to whether patents should be granted for essentially software innovations when they are presented in combination with hardware; or should a restriction be applied based on where the essential inventive feature resides.  If the inventive feature resides in the conceptual manipulation of information, should this be grounds for rejecting a patent application, even if the prospective monopoly is presented in terms of a mechanical hardware environment?

The draft revision to MOPOP guidance on this issue takes the position in section 16.08.04 that a computer program per se is considered to be an abstract scheme or set of rules that is not of itself patentable. This policy would appear to bar patenting of the higher principle arising out of the checksum concept. But it would still leave open the prospect of granting patents for such an invention when incorporated into an arrangement involving tangible components.

This presentation of a draft document to define how the Patent Office expects patent applicants to behave is a compendious analysis of the issue. It is a valuable contribution to understanding how a patent office should manage applications that address computer-implemented inventions. While everyone is awaiting the long-delayed US Supreme Court Bilski decision, this document prepared by the examiners and staff at the Canadian Intellectual Property Office, is well worth reading.

 

 

 

US Law Reform: Prefiling Protection for Inventors under revised S515

 US Law Reform: Prefiling Protection for Inventors under revised S515
 
The Canadapatentblog postings of November 16, 2009 and January 31, 2010 addressed the scope of the draft novelty requirements under US Senate bill S515 as originally approved by the US Senate Judiciary Committee in April, 2009.  A proposed revision of that text has now been published by the Senate and is reproduced in the Patently’O blog posting of March 9, 2010 available here:
 
http://www.patentlyo.com/patent/2010/03/patent-reform-act-of-2010-proposed-first-to-file-statute.html#comments
 
The language used in this revision expresses much more clearly the apparent intent of the legislators.  The extensive Patently’O blog  commentaries on this revised text finally show that interested members of the patent profession are beginning to attempt to address the real meaning of these provisions.  These commentaries are all well worth reading.
 
In the Canadapatentblog posting of January 31, 2010, the key recommendation was that, under the new scheme being proposed, persons intending to obtain patent protection in the United States should: “file early and file often”.  Some of the key points to consider are as follows:
 
- initial priority patent filings including US Provisional applications should be as complete as possible in order to meet 35 USC 112 requirements
 
- foreign priority filings will enjoy the benefits of the US grace period provisions equally with the filing of a US Provisional application
 
- every patent filer should take advantage of the right to make additional filings during the priority year and consolidate the disclosures of all such filings into the final, non-provisional, patent application that may then be used around the world
 
- the proposed new US patent law includes a Canadian style self-originating grace period which applies to self-originating disclosures, i.e. disclosures originating from the inventor associated with the filing
 
- the proposed new US patent law includes an additional feature present in the following sections:
 
35 USC 102 (b) EXCEPTIONS.—
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—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— …….
(B) 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…….
 
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if— ………
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), 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; ………
Read the rest of this entry »

First-To-File vs First-To-Invent: Why is there a Dispute?

Patent law reform legislation, for the third time, is presently pending before the US Congress. During 2009 the debate over Health Care has moved this subject to the back burner. But in the last days of 2009, initiatives are now being taken by proponents to save the old first-to-invent patentability system rather than switch to a first-to-file concept as adopted elsewhere in the world.

Defenders of the existing first-to-invent system argue that it spares inventors the burden of rushing to the patent office to make a record of their inventions. If you are the first inventor under the existing US system, then you’re entitled to delay for up to one year from the date of your conception of your invention with complete security. You may do so only so long as you are working on reducing your invention to practice, by either building an apparatus that incorporates the invention or by filing a patent application. But if an inventor is diligent in this respect, there is no rush to the patent office.

The patent law blog Patently’O run by Prof. Dennis Crouch addressed this issue once again on December 10, 2009:

http://www.patentlyo.com/patent/2009/12/the-matrix-for-first-inventor-to-file-an-experimental-investigation-into-proposed-changes-in-us-patent-law.html

This posting makes reference to a paper of December 4th by Brad Pedersen and Justin Woo of Patterson, Thuente, Skaar & Christensen, P.A. in Minneapolis entitled “The ‘Matrix’ for First-Inventor-To-File: An Experimental Investigation into Proposed Changes in U.S. Patent Law”:

http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1518660

Amongst numerous comments made on the Patently’O blog in response to this posting, a strong defense of the existing first-to-invent system was put forward by Ron Katznelson, whose views are representative of many of the 160,000 small business and startup companies represented by the The Small Business Coalition. These comments were based on the practical experience of small businesses and startups who count on patent rights to get themselves under way but cannot afford to comply with the early filing requirement of a first-to-file system.

Here are Ron’s comments on this issue:

“Consider an actual profile of a five-year R&D and invention effort of the Mova® system developed by my friend Steve Perlman. It is described in Steve’s Columbia University presentation available at http://j.mp/Mova-development. Slide 35 shows that no less than fifty important inventive ideas had been conceived, evaluated and tested over periods spanning months or years in the course of this system’s development (labeled by “invention” squares).

The majority of these inventions proved to be useless. During that time, only about six patent applications had been filed (labeled by “path to success” arrows). In most cases, there was no way of filing prompt and enabling applications. As Steve explains in his presentation, the prospects of such a development effort under FTF would have been dire. Because the cost, effort and time lost to have acted on every one of these inventions would have been prohibitive, this R&D team would have had to frequently face a painful dilemma as to which of these inventions should be written up and filed in a patent application.

Unfortunately, many such premature guesses would have proved wrong, so, under FTF, costly applications would be filed for some useless inventions and patent protection would be lost for other valuable inventions. Investors will not assume such risks, which is why such inventions seldom occur under FTF scenarios.”

Posted by: Ron Katznelson President of Bi-Level Technologies, Encinitas, California, Dec 16, 2009 at 08:25 AM as a comment to the Patently’O Blog of December 10, 2009.
In commenting on the Pattersen and Woo paper (above) Prof Dennis Crouch had observed in his Patently’O Blog of December 10, 2009:
“The Patent Reform Act of 2009 would replace the current “first-to-invent” (FTI) system with a new “first-inventor-to-file” (FITF) system. While touted as a way to harmonize the US system with “first-to-file” (FTF) systems used in other countries, an experimental investigation of a matrix of two hundred typical fact patterns for two competing inventors was analyzed under all three systems (FTI, FITF and FTF) to test this assumption. Based on the matrix analysis, it appears that if FITF is adopted there likely will be changes in applicant behavior and significant extra costs for at least several years as a result of the transition to a new system; and, it is unclear whether FITF really gets the US any closer to patent harmonization.”

Fair enough comment. But where is all this anxiety regarding a switch to a first-inventor-to-file system coming from? If you review the comments of Ron Katznelson above and the recent submissions of The Small Business Coalition on Patent Legislation in a letter sent to the U.S. SBA ( http://bit.ly/SB-Coalition-Letter-to-SBA ) , the great concern appears to be the consequences of pressuring small businesses in America, and particularly new business startups, to prepare and file patent applications more frequently and at a premature stage, before their inventions are fully developed and understood.
First some clarifying observations.

Compare “first-to-file” and “first-inventor-to-file” Read the rest of this entry »

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