Yesterday, I posted on the first-to-file debate and the grace period in S. 23, currently being debated by the Senate. Today, Hal Wegner emphasized a point that I made in my post, but which may have been buried toward the end. Because I think this point is important to understand, I raise it again today in a separate post.
Secret Prior Art
In Europe and the majority of the rest of the world, the universe of “prior art” that may be used to show that an invention is obvious or does not possess inventive step is closed as of the filing date of the application. This means that anything that has published or any public activity or disclosure that would render the invention obvious is known as of the filing date.
Patent applications are generally published 18 months after their earliest priority date. This means that there is an 18 month delay between the time that an application is filed and the time its contents become available and known to the public. During this intervening time, the application is held by the patent office in secrecy.
Once a patent application is published or issues, it becomes prior art as of its filing date. Thus, an application that was secret for 18 months suddenly becomes prior art as of 18 months ago. This can be a problem for patent applications filed during the 18 month interval when the application is kept secret.
In most countries, the application is only prior art for novelty or anticipation purposes. It is only prior art if the published application contains disclosure that it identical and anticipates the later-filed application. In the US, by contrast, the published application can also be prior art for obviousness purposes, such as when combined with another reference. This is the problem of “secret prior art.”
As I noted yesterday, under current US first-to-invent law, an applicant can file an affidavit with evidence of a prior invention date to disqualify the published application as prior art. Under S. 23, the secret prior art may only be disqualified if it is the inventor’s own disclosure or a disclosure from someone who obtained the subject matter from the inventor. This is the reduction of the grace period which currently applies to any inventor and third party activity, but will be reduced by S. 23 to only inventor activity during the year prior to patent application filing. Thus, S. 23 expands secret prior art beyond current US law which is already more extensive than other countries.
If one of the avowed reasons for S. 23 is to harmonize US law with other countries, this amendment actually moves US law farther away rather than closer to them.
RCEs
While Mr. Wegner is correct about the grace period and secret prior art issues, he continues to cite positively the unsupported letter of Cecil Quillen that simply eliminating RCEs and continuing applications would fix all that ails the patent system. As I noted earlier, only by a more drastic change to patent prosecution practice where examiners must consider more after final submissions and response times can be further extended to permit time for the gathering and submitting of information and evidence would this change be feasible.
As I noted, examiners don’t spend the same amount of time on RCEs and continuations as on regular applications. Their elimination would not be the boon that Mr. Quillen argues.
If there is an RCE problem, it results more from examiner churning than applicant activity. Their abolition would result in serious harm to the patent prosecution system as it currently exists.
