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July 7, 2010

Dated

You don't need to have a novel invention to get a US patent. You just need to beat the clock, a clock rigged to America as superior to inferior foreigners, a patent xenophobia most unbecoming. "Domestic and foreign filing dates stand on entirely different footings." Peter J. Giacomini and his pals tried rigging the clock for their computer data cache patent application. The BPAI upheld the examiner's § 102(e) rejection over 7,039,683 (Tran). Giacomini did not dispute Tran as invalidating if prior art. Giacomini argued Tran was not prior art, even though Tran claimed priority to a provisional application. Giacomini's problem was that Tran's provisional was a US application.

In re Peter Joseph Giacomini et al (CAFC 2009-1400) precedential

The Tran patent's filing date is December 29, 2000, exactly a month after Giacomini filed his applica-tion. However, the Tran patent claims priority to a provisional application ("the Tran provisional") filed on September 25, 2000, which antedates Giacomini's filing date. Therefore, the Board held that the Tran patent has a patent-defeating effect as of the filing date of the Tran provisional.

Section 102 governs the conditions of patentability. The statute, in pertinent part, states:

[A] person shall be entitled to a patent unless . . . the invention was described in . . . (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent . . . .

35 U.S.C. § 102(e)(2) (emphasis added). An application that a patent was "granted on" is the first U.S. application to disclose the invention claimed in the patent. In re Klesper, 397 F.2d 882, 885-86 (CCPA 1968). Title 35 further clarifies that "[t]he provisions of this title relating to applications for patent shall apply to provisional appli-cations for patent, except as otherwise provided, and except . . . [in] sections 115, 131, 135, and 157 of this title." 35 U.S.C. § 111(b)(8). Under this encompassing rule, "applications for patent" under section 102 includes both provisional and non-provisional patent applications. Therefore, an applicant is not entitled to a patent if another's patent discloses the same invention, which was carried forward from an earlier U.S. provisional application or U.S. non-provisional application.

The Board found that "[t]he Provisional Application No. 60/234,996, from which Tran claims priority under 35 U.S.C. § 119(e), discloses that '[a]nticipating requests for electronic information . . . is generally performed based on one ore [sic] more criteria, e.g., past requests for information.'" Ex parte Giacomini, No. 2009-0139, at *5. Section 119(e) treats a non-provisional application as though filed on the date of its corresponding provisional application. 35 U.S.C. § 119 (Benefit of earlier filing date; right of priority) recites:

(e)(1) An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in a provi-sional application filed under section 111(b) of this title, by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b) of this title, if the application for patent filed under section 111(a) or section 363 of this ti-tle is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application . . . .

35 U.S.C. § 119(e)(1) (emphases added).

An important limitation is that the provisional application must provide written description support for the claimed invention.

But Giacomini never argued enablement of Tran's provisional, so that was moot.

Giacomini, who filed his application after Tran filed his provisional application, cannot receive a patent covering the same subject matter under 35 U.S.C. § 102(e).

This conclusion is consistent with "[t]he fundamental rule . . . that the patentee must be the first inventor." Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 402 (1926). In Milburn, the Supreme Court held that a patent applied for before but not granted until after a second patent is sought bars the issuance of the second patent. Id. at 400-01. The rule stems from the principle that, subject to certain exceptions, "one really must be the first inventor in order to be entitled to a patent." Id. at 400. Although Milburn concerned a non-provisional application, a provisional application similarly shows that someone else was the first to invent. See id. at 400 ("[O]bviously one is not the first inventor if . . . some-body else has made a complete and adequate description of the thing claimed before the earliest moment to which the alleged inventor can carry his invention back.").

Giacomini got confused about discriminating only against foreign patent applications.

Giacomini argues that 35 U.S.C. § 119(e) shifts a patent's priority date but not its effective reference date to the filing date of an earlier provisional application. In other words, Giacomini contends that although the Tran patent claims the benefit of priority to the Tran provisional, the Tran patent does not have a patent-defeating effect as of the Tran provisional's filing date.

Giacomini's distinction between priority date and effective reference date largely stems from In re Hilmer, 359 F.2d 859 (CCPA 1966). The issue in Hilmer was whether a U.S. patent, cited as a section 102(e) prior art reference, was effective as of its foreign filing date under section 119. Id. at 862. This court's predecessor rejected the Board's conclusion that "the foreign priority date of a U.S. patent is its effective date as a reference." Id. at 870. The court instead held that "Section 119 only deals with 'right of priority.' The section does not provide for the use of a U.S. patent as an anticipatory reference as of its foreign filing date." Id. at 862. Thus, Hilmer distinguished a patent's priority date under section 119 and effective reference date under section 102(e) in cases involving an earlier foreign application. Giacomini equates a U.S. provisional application to a foreign patent application to argue that the Tran provisional's filing date is not the Tran patent's effective date as a prior art reference.

But at the time this court's predecessor decided Hilmer, section 119 only governed the benefit of claiming priority to an earlier filing date in foreign countries. Id. at 862. Congress added section 119(e) along with the enactment of provisional applications in 1994. See Uruguay Round Agreements Act, Pub. L. 103-465, 108 Stat. 4809 (1994). Therefore, broad language in Hilmer concerning section 119 is not applicable to provisional applications. Also, Giacomini misses an important distinction between Hilmer and the present case. Hilmer involved an earlier foreign application while the present case deals with an earlier U.S. provisional application. See Klesper, 397 F.2d at 885 (Hilmer clarified that "domestic and foreign filing dates stand on entirely different footings.").

Section 102(e) codified the "history of treating the disclosure of a U.S. patent as prior art as of the filing date of the earliest U.S. application to which the patent is entitled, provided the disclosure was contained in substance in the said earliest application." Id. (emphasis added). According to Hilmer, an earlier foreign application does not shift a corresponding patent's effective reference date because section 102(e) explicitly requires the earlier application to be "filed in the United States." Hilmer, 359 F.2d at 862 (quoting 35 U.S.C. § 102(e)). This court's predecessor warned that section 119 cannot be read with section 102(e) to modify the express domestic limitation. Id. In contrast, an earlier provisional application is an application "filed in the United States." 35 U.S.C. § 102(e). Treating a provisional application's filing date as both the patent's priority date and its effective reference date does not raise the alleged tension between sections 102(e) and 119. Given the "clear distinction between acts abroad and acts here," Hilmer, 359 F.2d at 879, Giacomini's reliance on Hilmer is misplaced. Id.

Affirmed.

Posted by Patent Hawk at July 7, 2010 8:36 PM | Prior Art

Comments

Huh?

[A] person shall be entitled to a patent unless . . . the invention was described in . . . (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent . . . .

In a F2I world "before the invention by the applicant" doesn't mean the date the application was filed, which is all Rader talks about. It means the date of invention -- reduction to practice.

Here's Rader's misstatement of the law:

"Giacomini did not file his application until months after Tran filed his provisional application. Giacomini is not the first to invent in the United States and thus is not entitled to a patent."

This is a non sequitur. One cannot discern from filing dates who the first to invent is. These applications were co-pending. Why was there no interference called?

Good question. Rader did not follow the right time-line. The most relevant time-line is the FOAMs on these co-pending applications. It looks like the Tran patent must have issued before the FOAM on the Giacomini application was filed -- otherwise an interference would be called.

How could the Tran patent issue before the Giacomini FOAM when Giacomini filed first?? How could that be when there are only a few months difference between filing dates???

Essentially, Elisha Gray's questions. In that case the examiner took a bribe from Bell not to declare interference. Hmmmm . . .

Something smells.

Posted by: Elisha Gray's hitman at July 8, 2010 8:02 AM

Hitman,

Why is FAOM (the correct acronym) even remotely relevant?

Posted by: Pedantic Pete at July 8, 2010 8:58 AM

Pete

FAOM is "correct?" Authority?

I join with other, older, wiser members of the IP blog community in supporting First Office Action on the Merits (FOAM) as the preferred acronym because FAOM is not mnemonic, FOAM is -- anyone can remember a simple word, but most people have to walk through the individual letters F-A-O-M to extract the meaning.

As to the FOAM in the subject case, maybe it doesn't matter. Giacomini was first to file. If the FOAM in his case did not come until Tran was patented, then Giacomini got screwed out of an interference.

At any rate an interference should have been declared in the first FOAM in which ever case was examined first.

Of course, if Giacomini didn't reduce to practice prior to filing, he would be too late in any event. But an interference would have made a record of this problem.

Posted by: Elisha Gray's hitman at July 8, 2010 10:47 AM

"Why was there no interference called?"

Maybe because they didn't claim the same thing. Oh yea, the thing that nearly always prevents an interference from being called. Duh.

"then Giacomini got screwed out of an interference. "

You don't seem to know what an interference is about...


You also seem to not know that most people would probably prefer to avoid an interference, the examiners involved are included in that category of people.

Posted by: 6000 at July 8, 2010 11:49 AM

Hitman,

Walk through PHOSITA.


"other, older, wiser" - respectfully, same question as yours: Authority?

Too bad the hawk doesn't do polls so that we could settle the question.

My (pedantic) point, however, is that FAOM (First Action On the Merits), or even FOAM (First Office Action on the Merits), is not related at all to the issue at hand (lack of call for interference).

Posted by: Pedantic Pete at July 8, 2010 11:55 AM

"You also seem to not know that most people would probably prefer to avoid an interference, the examiners involved are included in that category of people."

And you base this conclusion of yours on what? Your vast experience representing applicants?

I have had many clients ask me about the possibility of getting an interference declared, and what the requirements are, and a couple actually ask me to attempt to provoke an interference.

Interference may be useful as a business and/or legal strategy. If it's in the client's best interest to get an interference declared, then that's what's done, or attempted.

You just don't have the background knowledge to discuss this issue.

Posted by: pong at July 8, 2010 12:51 PM

"And you base this conclusion of yours on what? Your vast experience representing applicants?"

I base this "conclusion", which is actually just my own experiences, what I've heard, and what stands to reason as most people want to avoid spending $$$ when they don't have to.

"I have had many clients ask me about the possibility of getting an interference declared, and what the requirements are, and a couple actually ask me to attempt to provoke an interference."

A whole "many" and a "couple"? Man, what a large number. Should we say "2" people in all your years of practicing as an attorneytard have actually wanted one enough to ask for one after they know a little about what will happen? So, that's 2 out of how many? 10000? Either way, just because you want one doesn't mean your examiner wants one or that anyone else involved in the process does either. Nobody here that I've talked to wants one. They're a pain that nobody wants to deal with, especially when prior art will do the trick to take care of at least one of the party's claims. Kind of like in this case. So, what we're left with is 2 people out of like 30000 or so that were involved in the cases that pongtard makes reference to. Even assuming he's off by at least an order of magnitude (which he necessarily is because he is a tard) ~20 people out of tens of thousands would like an interference to be declared. Gee, those numbers jive well with my statement.

"Interference may be useful as a business and/or legal strategy."

O, of that I have no doubt. As sholes use nonsense as "strategery" all the time. They're the ones that make pwnage sweet. If you can pwn them, it'll make you feel like you've done a good deed.

"You just don't have the background knowledge to discuss this issue."

I have plenty of background knowledge to discuss this issue to the point which I have discussed it. I notice that you don't bother to dispute what I actually said, you just want to pick at nonsense that fits precisely within what I said.

"You also seem to not know that most people would probably prefer to avoid an interference, the examiners involved are included in that category of people. "

^This is correct, whether tardpong wants you to believe otherwise or not. Most people would probably prefer to avoid an interference. That is not to say EVERYONE does. There are some tards out there that wouldn't because they either a) think they're one of those 7 out of hundreds of thousands that actually will have an interference that goes all the way to resolution (using last year's numbers) b) think they're the one out of those 7 that are the small guy that will win c) are a tard that thinks they need to strategerize (they've been talking to tards like pong) and/or d) some other nonsense that I'm too lazy to write down. Oh, and maybe an examiner who is simply curious about what would happen. I might see about declaring one sometime just to be an as s.

In any event, it is simpler for the examiner to short circuit all that nonsense by applying prior art and not saying sht. I know first hand. I also know first hand that killing people's claims from people like tardpong are the sweetest kind of invalidations because they think they know some sht and that means something. But, while they do know some small amount of sht, they don't know wtf they're doing with that knowledge. They lack understanding and that leads to failure in execution.

Posted by: 6000 at July 8, 2010 2:45 PM

6000: "I have plenty of background knowledge to discuss this issue to the point which [sic] I have discussed it. I notice that you don't bother to dispute what I actually said, you just want to pick at nonsense that fits precisely within what I said."

A lot of us don't respond to your incessant ad hominem farting, but having the last word doesn't make you right for the simple reason that your attacks are beneath the dignity of most of the professionals who contribute here.

Grow up.

Posted by: Elisha Gray's hitman at July 9, 2010 7:28 AM