Prior to the America Invents Act of 2011 (AIA), prior art were either (1) prior in time to the invention and thus anticipated the invention (e.g., 102(a), (e), and (g)); or (2) more than one-year prior to the application filing date and thus raised a statutory bar (102(b)). Within this schema, the pre-AIA Section 102 included the title of “Novelty and Loss of Right” where novelty refers to anticipation and loss of right refers to the statutory bar.
The AIA totally rewrote Section 102 and eliminated the notion of anticipating the invention and also altered the notion of the statutory bar. The new rules focus instead on the effective filing date of the invention create what looks a lot like the statutory bar of 102(b) (except for automatic one-year grace period). The rule is not about absolute novelty in terms of invention-date (as that term has always been used in the US) but instead about filing of an application before prior art emerges. Although this seems to fit within what we used to call the statutory bar, Congress included “novelty” within the title of the new Section 102(a) and left-out loss of rights.
Although we understand how the statute is supposed to work, we’re left with the small matter of crystalizing the name for prior art that qualifies under post-AIA 102. It doesn’t necessarily anticipate the invention – and congress appeared intent on moving away from the passive loss-of-rights designation. We could spell-out “qualifies as prior art under Section 102”, but that’s not the kind of identifier that sticks. I propose using the middle ground of “anticipating the patent” or “anticipating the application,” depending upon whether a patent has yet issued. This proposal seems to fit within Congressional intent but also implicitly recognizes that we’re no longer concerned with the invention date but instead the key patent date (i.e., effective filing date). This approach seems to also roughly fits with the language used by European Courts that have long focused on filing dates. Overall, this is not a big deal, but it may end up being important to get the words right.
Sorry pal, but again you are wrong – what part of “”I did not say that” did you not understand?
You’ve jumped from “you seem to” after being told otherwise to “you have said.”
And you think an explanation from me won’t go right over your head? You need someone to hold your hand through the basics, and that’s just not going to be me.
As for Ned Heller – with all due politeness, Fu. If you think that I am not a patent attorney, and I run rings around your “knowledge” of patent law, how low does that make you? Criminy, I even remember you NOT knowing what the status of the Tafas case was – MONTHS after it was finalized.
You are WAY too busy peddling your Ned-IMHO want-to-be law to bother with what the law REALLY is.
Mr. Non-Oblivious, it is a waste of time talking with anon. He pretends to be a “patent” “attorney,” but he has said enough over the time I have been here for me to sincerely question whether he is either a patent agent or a patent attorney. He often makes gaffs on the basics that no one practicing patent law or even law could not possibly know.
I see what you mean. “anon” might have had some interesting insight, like some aspect of 102/103 that isn’t likely to come up in practice.
You are saying something easy and direct and wrong.
In your post below, you criticize MaxDrei, saying “You want something to be labeled ‘prior art’ and then distinguish how that item may be used.” That is the actual structure of pre-AIA 102(e), (f), (g) and 103(c): The prior art defined in pre-AIA 102 could not be used in certain situations. Pre-AIA 103(c) said “subject matter… which qualifies as prior art only under… subsections e, f, g… shall not preclude patentability….”
I am still wondering if anyone sees a world of prior art for AIA 102 that is not prior art for AIA 103, or vice-versa.
…additionally, your alternative explanation misses an important nuance. You want something to be labeled “prior art” and then distinguish how that item may be used, which arrives at the same end as whether or not that item is first determined to be “appropriate” prior art, and then used. But the means are different to that same end. An item may at once be both “prior art” and not be “prior art,” and it is this subtlety that to the uninitiated makes “no common sense,” but is perfectly common sense to one that has learned the legal terrain.
Great difficulty…?
Not at all MaxDrei.
As to “draw you out,” is there something wrong with that? You too, if I recall correctly, have admitted to asking questions to stir the conversation, eh? Is there something amiss with wanting a conversation, that you seem to want to denigrate my doing so?
As to “losing face,” that is not a concern, leastwise with me. Perhaps you inject your own animus and project that insecurity to me because even after forty years, your views so very often miss the mark. You are so very eager to not admit anything in our conversations, and always eager to praise others that happen to agree with your own “larger” views. Such does not go unnoticed, my friend.
Non-ob, keep in mind that “anon” is bent on drawing you on. His answers are calculated to keep you coming. He craves what he calls a “conversation”.
When he wrote that the:
“…world of prior art for 103 is different than the world of prior art for 102.”
I think he had in mind that, for any given item in the prior art universe, the way you use it in obviousness attacks can be very different from the way you would use it in novelty attacks. The poster “anon” is one of those who has great difficulty saying with precision what he means, with the result that readers read what he says and routinely misunderstand what he means.
When challenged, his invariable retort, to avoid losing face, is along the lines of “That’s for me to know and you to find out”. Could it be that kicking into his thinking is his legal training, and the imperative never to “admit” anything, never to write along the lines of “What I meant to say was….”.
“You seem to…”
Not at all.
I seem to be saying something easy and direct (short declarative sentences, even).
Another terminology question (though not necessarily altered by the AIA): Does an infringing product “infringe a patent” or “infringe on a patent”? In other words, is the preposition “on” necessary or even proper?
“Infringing product” is like “articles that infringe.” We kinds know what that means, but technically, it is the act of making, using or selling the invention that is an infringement.
If what is made, used or sold completely embodies the invention, certainly there is an infringement. But what if what is sold completely embodies the “invention,” but the claims include convention elements or steps that are performed by others. The sale exhausts the patent. Presumably, the sale is also an infringement.
I still think the Akamai decision is not fully compatible with Quanta and Univis Lens because it is not clear the en banc decision covers this.
That was completely scattered.
What point where you trying to make?
I think this topic is only about the inaccuracy of the language. And the problem is only the U.S. has the concept of “invention date”. In other jurisdictions, invention date is completely useless, when people refer to patent applications, they are talking the corresponding inventions.
Dennis:
If you really want to help us out with semantics, how about proposing a verb for the condition in which a reference of renders a claim obvious. We say “the reference anticipates the claim” but we have to say “the two references render the claim obvious” when we could say “the two references something-ate the claim.” It is really clunky to write an explanation of obviousness with currently accepted terminology.
K. Davit Crockett,
I take it you think this is much ado about nothing. However, I suspect Prof. Couch is looking for terminology to use in a class he teaches to students who don’ eat, sleep and breath this stuff (same for DC judges).
We differ on the following: “And Dennis, I don’t know what you mean when you say that prior art that anticipates a claim “doesn’t necessarily anticipate the invention.” If it’s prior art, and it disclosed all the limitations of the claim, it does necessarily anticipate the invention, because that is the very definition of anticipation.”
Claims are mutable, especially during prosecution. Thus, the invention can be redefined through amendments. To me, anticipating the invention means there is no possible claim based on the application that is not anticipated. An example is publication of the entire application more than a year before the effective filing date. In this case, the invention is anticipated before any claims are written. It is true that after a patent issues, claims are not easily changed and in the initial stage of litigation, it is the invention as claimed that counts.
Oops. This was supposed to be a reply to 12.
OK, that makes sense. But by statute, the claims define the invention (what the inventor… regards as the invention, per 35 USC 112(b)). In a world where the claims define the invention (by statute and in an oft repeated incantation that we have to respect if we are trying to speak the same language), it would make more sense to be clearer: The prior art might not anticipate the invention as it might be described in a narrower claim based on the spec, or it might not anticipate the invention as conceived by the inventor before the patent attorney broadened it, but it might anticipate “the invention” as defined by a claim the inventor submitted to the patent office. Teaching that the invention refers to something else will result in a class of graduates speaking a language different from the people who want to hire them, and leave them confused by case law that speaks standard patentese.
The difference between “the invention” and “the claim” is something I bet you make clear when answering office actions: If the claim is distinguished from the prior art by feature X, you probably avoid telling the examiner that “the invention is distinguished from the prior art by feature X.” Otherwise all your claims might be limited by your argument.
Whats wrong with:
The claims are (allegedly) obvious in view of X and Y.
If you must come at it from the other direction:
References X and Y (allegedly) render the claims obvious.
To me, invention = claims. Always has, always will. (Regardless of the fact that the courts sometimes look to the specification for the “invention”.)
PatentBob, what is the difference between “the invention” and “embodies the essential elements of the invention” in connection with a sale of the invention, where a third party performs the conventional elements of the claim?
Your questions are a complete non sequitur to the comment by PatentBob.
You are (apparently) desperate to talk about something else…
Maybe it’s time for you to retire Ned? Are you even aware how off you are?
Anon, he was saying the claim is the invention when in fact the claim can contain completely routine elements. I think we lose site of this when the statute makes selling, using or making the invention an infringement.
Maybe you are losing sight of “claim as a whole.”
That takes care of your “concern,” eh?
In recognition of the AIA I submit that we should now call it anticiaiapation or antaiapation. Or just “aiapated” or “aia-pated” for short.
Imma do that in my next summary judgment motion.
AIA-tipated?
Whatever strikes your fancy
I cannot understand your post, despite my decades working daily with issues arising from 35 USC 102 (old and new).
“Prior art” sounds like a good name for things that qualify as prior art.
Prickly people used to correct non-prickly people, insisting that prior art “anticipates a claim” and suggesting that those who spoke of prior art anticipating a patent were ignorant hayseeds. We all knew what we were talking about, but somehow the semantic exercise seemed fun to some.
I suggest sticking what has been used to naturally describe the circumstance in which a single prior art reference discloses all the limitations recited in a claim: Anticipation, anticipating the claim, etc.
Since the tests under old 102(a) and 102(b) were identical, both types of prior art “destroyed novelty” in the same way: by anticipating a claim.
Under the new 102(a)(1) and (2), the test is the same, isn’t it? The boundaries of what is and is not prior art have shifted slightly, but the concept of anticipation has not changed. So, there is no need for new language.
And Dennis, I don’t know what you mean when you say that prior art that anticipates a claim “doesn’t necessarily anticipate the invention.” If it’s prior art, and it disclosed all the limitations of the claim, it does necessarily anticipate the invention, because that is the very definition of anticipation.
I agree with everything here … although 6’s suggestion at 13 is also interesting. 😉
Agreed. 102 identifies prior art. 103 the standard to be used when a single reference art does not anticipate a claim. But the art for 103 purpose is that identified in 102.
The world of prior art for 103 is different than the world of prior art for 102.
Basic stuff guys.
What is the difference?
Take a basic IP course. If you have to ask such a question on a basic principle, then my explanation will undoubtedly go over your head.
You seem to be referring to 103(c) which no longer exists. The common ownership exception now appears in 102(b)(2)(C), and this eliminates that difference. What differences survive? What differences are new to the AIA?
But even when 103(c) was in effect, it still referred to 102e, g and g references as prior art:it just said that prior art did not preclude patentability. It did not say those references were no longer prior art.
PROGRESSIVE CASUALTY v. LIBERTY MUTUAL
link to cafc.uscourts.gov
Even though the Federal Circuit held that the decision of the Board in a CBM was supported by independent grounds, it determined that a final written decision that was based upon a new argument first raised by the petitioner in a reply brief cannot be relied upon by the Board in its final written decision.
“Neither Liberty’s petition nor the Board’s institution decision had pointed to the insurance-table passage of Kosaka; it was raised for the first time, as teaching claim limitations, in Liberty’s post institution reply brief—after Progressive no longer had a full opportunity to respond to it with evidence.
Liberty, along with the Director of the PTO, argues that the Board’s reliance on the previously unmentioned passage in Kosaka was not a “new ground of rejection” because that label applies only in examination and reexamination. See 37 C.F.R. § 41.50(b); 37 C.F.R. § 41.77(b). But the Administrative Procedure Act imposes its own similar obligations on Board actions, including in covered business method reviews. For example, 5 U.S.C. § 554(b)(3) requires that “[p]ersons entitled to notice of an agency hearing shall be timely informed of . . . the matters of fact and law asserted”; § 554(c) requires that agencies give “all interested parties opportunity for . . . the submission and consideration of facts [and] arguments . . . [and] hearing and decision on notice”; and § 556(d) “entitle[s]” a party “to submit rebuttal evidence.” Indeed, § 554(b)(3) has been applied to mean that “an agency may not change theories in midstream without giving respondents reasonable notice of the change” and “the opportunity to present argument under the new theory.” Rodale Press, Inc. v. FTC, 407 F.2d 1252, 1256– 57 (D.C. Cir. 1968). The APA’s requirements may well embody, in substance, the inquiry at the heart of the new grounds-of-rejection analysis: “whether applicants have had fair opportunity to react to the thrust of the rejection.” In re Biedermann, 733 F.3d 329, 337 (Fed. Cir. 2013) (internal quotation marks and citation omitted).”
Ned you left out a key aspect of the decision: If there was [a notice] error, it was harmless. The Board did not rely solely on the insurance-table passage of Kosaka. It independently rejected Progressive’s lack-of-knowledge argument, making a determination supported by the evidence that a relevant skilled artisan would have understood fuzzy logic.
But it is noteworthy that Progressive’s “Appeal Appeal Appeal!” strategy amounted to squat. Five completely junk patents on “automating” various aspects of insurance rate calculation are now tanked forever. None of them should ever have granted in the first place.
Two of the patents were effectively Rule 36 judgments of the Board’s obviousness determinations (“We have fully considered Progressive’s arguments and find them unpersuasive. We affirm the Board’s decisions without further discussion.”).
Another patent was tanked because of an egregious written description issue.
A forth patent was tanked as obviousness after the Federal Circuit swept aside the desperate Progressive procedural attack, as I already described.
The discussion of the tanking of the fifth patent is possibly of most interest because of the Federal Circuit’s willingness to read the Board’s decisions “as a whole” and fill in the “missing” motivation to combine. In other words, the Federal Circuit used its grown-up brain to crush a junk patent so everybody’s time wouldn’t be wasted all over again:
[A] relevant skilled artisan would have been motivated to make insurance determinations more accurate and would have known of at least some use-based actuarial methods, he or she would have been motivated to look at use-monitoring methods in other safety-related contexts to see what else might yield helpful actuarial data. The Board did not clearly state this rationale in any single portion of its decisions…. Nevertheless, the rationale is apparent when the decisions are read as a whole.
This is a great example of the CAFC actually doing its job. Please keep up the great work.
Lesson for habitual appealers of procedural issues that will never rescue your junky patents: find a better way to waste your time and money.
MM, thanks for the clarification. I thought I had covered it with the “independent grounds” point.
But the point I made is of most interest to IPR practitioners.
Apologies for interrupting this hugely important thread but did everyone see where sooperpundit Bill Kristol suggested that Justice Alito might consider running for President (as a Republican, of course)? See, e.g., link to lawyersgunsmoneyblog.com
A successful run would certainly shake things up a bit. Back in the 19th century, apparently, it wasn’t unusual for Supreme Court justices to campaign from the bench. More here: link to scotusblog.com
Either the prior art “discloses” the claimed invention or it does not…
No?
If you are suggesting that “discloses” be used instead of anticipates, there is a problem of the time element connotation. A document can be published AFTER the filing date of the application that “discloses” the invention.
“Enables” is the real requirement.
Jefferson: from Act of 1793, Section 1: “not known or used before the application…”
As explained in Pennock v. Dialogue, commercial use or sale of the invention by the applicant prior to filing abandons the inventor’s right to a patent. However, public knowledge and public use by other also “bars” the right to a patent.
The public use and public knowledge by others was and is rightly called “lack of novelty” even though it was then measured at the date of filing.
See post 1 – your “selectivity” is at fault again.
Hey, anon, we had first-inventor-to-file in 1793. If, at the time of filing, the invention was known or used, worldwide, it lacked novelty.
The statute as phrased is correct.
You are being excessively obtuse and quite deliberately omitting the items from the Congressional record that impact THIS law – not the previous law that you are attempting to hold up (incorrectly) as controlling.
The sad thing is that you should know better because we have had long discussions on this point. This makes your present advocating especially troubling, not just inte11ectually dishonest but quite possible unethically so.
Watch your advocacy son.
anon, I have no clue what you are talking about.
It sounds super serious, though, Ned!
Be very, very careful or you might end up “decimated” like so many before you.
LOL
Or at least every 10th commenter….
“Or at least every 10th commenter”
If only I were so lucky. There is far more C R P on these boards than “every 10th commenter”
Also note, the claimed invention must be enabled by the prior art.
Dennis, the status of the prior art as being before the application only establishes its legal status as available for either 102/103 purposes. Whether it anticipates further depends on whether that prior art discloses and fully enables a claimed invention. Otherwise it is only available for 103 purposes.
Since the same prior art is used for both purposes, one should avoid describing the prior art as anticipatory when it is not
…hence one reason for the demise of the Jepson style claim format.
Maybe you haven’t noticed…
1. Art never anticipates the invention, so that phrasing has always been wrong. If a document was published prior to the alleged invention claimed, then the alleged invention claimed was not an invention.
2. I have never been comfortable with the word “anticipate” in the context of 102, as it sounds like the document was waiting for someone to invent the invention. Like me anticipating the invention of the Jet Pack and the Transporter Beam I was promised.
3. Why not simply “predates” where we all know that the word is shorthand for predates the application/priority date. Or, “prior art” where we all know we mean prior to the application/priority date.
Further to my point:
link to youtube.com
Les:
Art never anticipates the invention, so that phrasing has always been wrong. If a document was published prior to the alleged invention claimed, then the alleged invention claimed was not an invention.
Disagree. If the invention was legally prior art prior to the date a second inventor invents, there is invention, but the subject matter is not new on an absolute basis and not patentable because the statutory conditions on patentability.
Ned –
Words have meaning. In this case:
Full Definition of INVENT
transitive verb
1
archaic : find, discover
2
: to devise by thinking : fabricate
3
: to produce (as something useful) for the first time through the use of the imagination or of ingenious thinking and experiment
link to merriam-webster.com
There is no such thing as a second inventor. The second actor designed something that had already been invented. Ignorance of prior invention does not make one an inventor. One can discover something for ones self, or perhaps for Spain, but invention doesn’t work that way.
Les,
We’ve been over this before – there very much can be multiple inventors based on how the term is used as a legal term of art.
You need to recognize your over-dependence on a non-legal definition.
It might help you if you were to explore the topic from an understanding of perfecting an inchoate right into a legal right.
Words are to be given their plain meaning ….except where we want to make up a new meaning?
Les, if discoveries are patentable, could Columbus have patented the New World?
Ned –
At 7.2.1 I was making a point about a difference between invention and discovery. Invention occurs once (by definition), whereas the same item or fact can be discovered individually by separate entities for themselves.
As to your question, I’m confident the New World is not a process, machine or manufacture. I’m skeptical on the issue of composition of matter, but would entertain arguments.
As I thought was implied at 7.2.1, I think Chris would have had “known or used by others” issues to contend with as well.
So, we would need more information as to who the discoverer was and when the discovery was made.
Your difference carries no distinction in the consideration of an inchoate right being made into a legal right, nor the notion that there – in fact – can be more than one person with an invention (simultaneous or not).
Independent invention, that is, invention by multiple people of the same thing independently and unknown one from another, is simply a matter of fact. This is NOT something new with the AIA, nor with the Patent Act of 1952, and verily has been a part of the patent system from the very beginning (hence the “this is not new” comment).
You seem only too eager to get caught up in semantics, my friend.
I appreciate that we don’t have a word to describe creating an embodiment of something that has already been created of which you are not aware. And I am not attacking anyone, who in desperation or exasperation with the failings of the language resorts to “second inventor” or “independently invented.” Just know you are using the word incorrectly and those extra highlighting words are important.
A second “independent invention” is not an invention. If we or the second inventor was aware of the previous invention, we wouldn’t call him an inventor would he? Does his ignorance of the actual invention make him an inventor?
According to you it does. That simply makes no sense.
Les,
You cling too tightly to a context that just does not apply. Those “extra words” as you call them carry well established meanings.
You seem to want to fret over the lack of a “single word” when the legal language already provides – and has always provided – the additional words that clarify the context.
Wake up son.
Then discovery is of something that exists, something that is not new.
Its NEWLY DISCOVERED!
Exactly, and DISCOVERIES are patentable (See Constitution and 35 USC 100).
No doubt, Les, “discoveries” are patentable — but you yourself agreed that only such discoveries that also comply with the rest of 101, and of course 102/103 and 112, are patentable. Thus a discovery of something that is “old” cannot be patented pursuant to 101 because 101 that requires that the subject matter be “new.”
I assume we agree that one cannot discovery machine, a manufacture, or a process. But one can discover a law of nature or a product of nature.
But a product of nature is not new. Therefore, as limited by 101, a discovery of a product of nature cannot be patented. But the use of a product of nature in a new process is patentable.
Also a law of nature is not new. But an application of the law of nature to produce a new result is patentable is process.
Discoveries are patentable.
There is nothing to discover but laws of nature and products of nature.
Therefore, the nonsense about laws and products of nature not being patentable is just that, nonsense.
No I didn’t Ned. Newly discovered is new. Newness is judged under 102. Does “known or used by others” ring a bell?
If the cure for cancer is naturally occurring but unknown then when it is discovered, it will be patentable. Just as if the same chemical were discovered in the lab and no one knew that it was naturally occurring.
Otherwise, no chemical is patentable because every chemical has probably existed somewhere in the universe at some point in time.
That just it, Les – it is NOT a new meaning – it is merely the meaning in the legal context.
You are trying to be so open minded that your brain falls out.
What legal reference are you using for this legal definition you have in your well sealed head?