Problems with the Draft Patent Bill Revisited

A number of blogs today have picked up on an email comment sent out by Hal Wegner on the drafting errors in the current reform bill. See here and here.

Just thought I'd point out that Broken Symmetry readers got this scoop over a month ago:

Section 102(a)(1)(B)

"who obtained the subject matter disclosed directly or indirectly from the inventor" -- shouldn't this be "the subject matter claimed"? This could have serious negative consequences if passed in this condition. We will have people claiming that ideas disclosed in their specification (that are wholly unrelated to what they've claimed) belong to them when others, using the information in the disclosure (and other information as well), make different, nonobvious claimed inventions. Isn't the point of this section to prevent the claimed invention from being preempted by a publication or patent application derived from its inventor (or inventors) within the one-year grace period? It's not the purpose to prevent the disclosure that supports the claimed invention from being used for other claimed inventions, right? Or do we want for the inventors to be able to preempt claims to entirely different inventions whose disclosures merely overlap with theirs? I don't think we want to open the door to that sort of dispute, even if the PTO wouldn't have to deal with it much because it wouldn't be obvious until publication at the earliest that there were applications made during the 1 year grace period to different inventions but with overlapping disclosures.

UPDATE: The problems identified by Hal are related to, but different from the problem pointed out a month ago. Hal's concern seems to be with (1) the fact that a later-filing applicant could overcome a rejection by showing how he or she had indirect access to the prior art cited against her application; and (2) the later-filed application could nonetheless serve as prior art for obviousness purposes against the first-filed application.

(1) seems to be correct, although I'm not sure how big a deal it would be in practice since the applicant would bear the burden of submitting evidence (by affidavit or declaration, for example) of indirect access to the alleged prior art. Either they have evidence of indirect access or they don't. It would seem hard to fake, especially with the penalty of unenforceability looming. And bear in mind that faking is pointless anyway if the cited prior art is filed more than a year before the later-filed application/patent.

(2) is harder for me to address. I don't know why Hal thinks that if something is not prior art under 102, it might still be prior art under 103.

Comments

[Quotidian]

Michael, I'm not tracking your point. Assume I privately disclose to you A, and B and before I file an application disclosing A and B but only claiming A, you file an application claiming B.

The policy-point is that you have no right to a patent on B because you got it from me. But I am the only person in a position to deny you that patent by bringing a Derivation Proceeding. So I have until a year after your appl or patent is published to go after you. If I don't, then your rip off works because you were FtF. [I'm not certain whether in litigation over your patent there would be 101 issues that you didn't invent B at all, even though you filed first.]

Also, my appl disclosing A and B but claiming only A still preserves for me the right to file a continuation on B. I have priority on all of the subject matter disclosed in my application, not just what was claimed. If I don't file the continuation on B, the subject matter becomes public domain because nobody else can be FtF.

So, as I understand it, FtF confers protection on the entire disclosed body of subject matter, but any disclosed subject matter not claimed within the other procedures and rules [continuation, divisional,etc] becomes public domain.

[Michael F. Martin]

Quotidian,

I think you got my point, but let me try to be even clearer.

Here's the relevant language from the draft bill Section 102(a):

"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— ....(B) 1 year or less before the effective filing date of the claimed invention, other than through disclosures made by the inventor or a joint inventor or by others who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor..."

The example you gave: You privately disclose to me A and B, and file an application disclosing A and B, but claiming only A. I then file an application claiming B.

Although you don't say in your example, my application claiming B might disclose B in a completely different way than it was disclosed in your application. Assume A is not disclosed, but instead C, D, and E in a wholly unrelated field.

Under the current draft of Section 102, should you later decide to claim B, my application will be no bar. This is your point about your right to file a continuation on what is disclosed but not claimed, and it is correct as far as I can tell.

The point I was trying to make is that under the current draft, your application would be a bar to mine. The point was not made well, because as you point out, it is not the language I cited that imposes the bar. Rather, it's the fact that I was not the first to file a disclosure supporting the claimed invention.

As you point out, the mechanism by which my claim would be found invalid could include either a derivation proceeding (triggered by you) or a civil judgment of invalidity under 102 (I think your reference to 101 was a typo). Either way, the situation is one in which a person (you or an accused infringer) can use an unclaimed part of a disclosure to block later patenting of that part by anyone (such as me), even when I have combined that part with bunch of other disclosure.

And that doesn't seem so bad anymore. When I first posted on this and sent it to Hal about a month ago, I was asking the question. Thinking about it again, I see that changing the language in 102(a)(1)(B) from "disclosed" to "claimed" isn't going to fix things to the extent that the relevant subject matter for purposes of this section was the claimed subject matter to begin with -- the rest of the disclosure isn't at issue in applying 102(a)(1)(B) to your claims.

And the solution for me is to claim B and C or B and D, etc. At this point, it's hard to see why I should get B if you were the first to disclose it. Thanks for commenting.

[Quotidian]

Michael

Here was my reference to 101:
"I'm not certain whether in litigation over your patent there would be 101 issues that you didn't invent B at all, even though you filed first."

Yes, I did mean "101" and here is my thinking --

"35 USC 101"
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Let's say I rip you off for some subject matter, A, you disclose to me, and I file first under FtF. You file too late and fail to perfect a DP in time. Technically, I am the first to file, but you are the first inventor to file. But I get the patent because you didn't challenge me with a DP. Bad guy 1, good guy 0.

But now, adding insult to injury, I file an infringement action against you. Seems to me that you have a defense under 101 because you could prove that I did not invent or discover the subject matter. In fact any infringer would have that defense, but, of course, they would have to know that I ripped somebody else off.

This is not a first to invent issue; it's an issue of inventor per se.

That 101 defense would not just win the infringement case, it would invalidate my patent. Bad guy 0, good guy 0.

Maybe in the litigation you could file a counterclaim for misappropriation and receive damages. Bad guy 0, good guy 1.

The derivations proceedings will be hot, too. There is almost an implicit element of fraud because if I rip you off and file an application on your stuff, I am misrepresenting that I am the inventor. Of course, my misrepresentation is to the PTO when I sign the declaration, so there is likely no liability in fraud to you even though you are injured by the misrepresentation. (Intentional misrepresentation, reliance on it, and harm.) Congress ought to put in some sort of qui tam feature that rewards a ripped-off inventor who brings a DP and wins.

I don't buy the argument that FfT is unconstitutional, and I don't buy the argument that FtF will bog the system down. But, as you are pointing out, there is a lot of real subtle stuff that needs to be thought through.

[Michael F. Martin]

With your explanation, the 101 reference makes more sense. You have a reasonable argument for why 101 might be recognized as a defense to infringement post-enactment of the reform statute. Going against you is the ancient precedent (established first in England) of recognizing whoever is first to bring an invention to the territory an "inventor."

You make some good points, and I agree that more scrutiny should be put upon any statute before it is passed, and more feedback heard from a variety of stakeholders in the system. But at least we are past the point where Congress is willing to defer to the intereference bar on priority rules!