09 July 2010

When is "Secret Prior Art" Not Prior Art?

In re Giacomini, No. 09-1400 (Fed. Cir. July 7, 2010)

In light of this decision by Judge Rader, we are today struggling to come to grips with the precise nature of the relationship between a US provisional patent application, and a subsequent corresponding nonprovisional application.

In re Giacomini addresses the question of whether, and in what circumstances, the prior art effect of a US patent under section 102(e) of the US Patent Code dates from an initial provisional filing date rather than the filing date of a nonprovisional application claiming the benefit of the provisional.


For those unfamiliar with the US statute, s102(e) deals with what is sometimes known as "secret prior art", ie earlier filed patent applications that are not yet published at the time of filing of a later application against which they may be cited. 

The most commonly encountered prior art (in patent searches, examination and litigation) is public, eg disclosure of relevant information by publication or public use before the priority date of the claims under review.  This type of prior art is specified by s102(a).  However, under US law an earlier-filed application will generally also be prior art, even if it has not yet been published.  While this may seem a little unfair, since the later inventor could not have known of the earlier application if it were not published, it is consistent with the idea under US law that a patent should only be granted to the first inventor.  If a claimed invention is actually described in an earlier application, this is prima facie evidence that the applicant may not have been the first to conceive of the invention.  On the other hand, the case of prior inventorship is specifically addressed by s102(g).


We do not intend to review In re Giacomini in detail here.  We recommend the summary published here on the Patently-O blog, which has generated spirited discussion (in which Patentology has participated with fascination and some bemusement).  For our purposes, it will suffice to briefly outline the reasoning of Judge Rader, without here expressing any view as to whether it is good or bad law.
  1. Under s102(e), a US patent application filed by another party is prior art, even though published after the invention was made by a later applicant, if it was in fact filed earlier.
  2. According to s119(e)(1), an application claiming the benefit of an earlier US provisional application is to be treated exactly as if filed on the provisional filing date, so long as it meets certain basic conditions, one of which is that the provisional application must provide adequate written description support for the invention that is ultimately claimed.
  3. So unless the written description in the provisional specification is insufficient, the nonprovisional application gains the full benefit, including the 102(e) prior art effect, of the provisional filing date.
In this case, there was no allegation made by Giacomini that the written description requirement was not satisfied by the provisional specification.  Thus the prior art patent at issue had an effective 102(e) date corresponding with the filing date of the provisional application from which it claimed priority.  Giacomini's claims were consequently anticipated under 35 USC 102(e).


We do not find the specific result in In re Giacomini surprising.  We have, on occasion, recommended to our Australian clients that they commence the patent process with a US provisional filing, rather than an Australian provisional, precisely in order to obtain a 102(e) date against subsequent applications. 

In most other jurisdictions, the priority system works differently.  This is primarily because countries other than the US operate on a "first inventor to file", rather than a "first to invent" basis.  In many cases (including under the Australian law, as well as Europe, China and numerous others) the applicant with the earliest priority date is the one entitled to be granted a patent for an invention.  No distinction is made between claims to priority from earlier domestic applications (including provisional applications, where they are available) or from foreign applications (ie under the Paris Convention or other international agreements).

As noted in the Patently-O article referenced above, another relevant difference between the US and most other jurisdictions is that elsewhere such "secret prior art"  can be cited only for novelty purposes, and not for assessing obviousness.  This ensures that different applicants cannot be granted separate patents for identical inventions, but two or more patents could be granted with claims that might otherwise be regarded as obvious variants of one another.


We indicated above that we are unsurprised by the outcome of In re Giacomini.  However, we are somewhat surprised by something that Judge Rader says in the first full paragarph on page 6 of the decision.  In a discussion that we suppose is technically obiter dicta, since it has no effect on the outcome, he plainly implies (consistent with the reasoning outlined above) that had the final granted claims of the prior art patent not found adequate written description support in the provisional specification then the 102(e) date would have been the later nonprovisional filing date, and the patent would not have been prior art.

The reason this seems surprising is because a patent specification may disclose many things, including multiple inventions or multiple embodiments of a single invention, and yet the patent that is eventually granted may claim only a subset of what is disclosed.  What is not claimed in a granted patent is generally considered to have been dedicated to the public, once no pending rights remain outstanding.

Imagine, then, that a provisional application discloses embodiments A, B and C of an invention, and that the subsequent nonprovisional application discloses the same embodiments A, B and C, along with improvement I.  Now suppose that (for whatever reason) the inventor ultimately decides to claim only the improvement I in the issued patent.  The improvement was not disclosed in the provisional, and so the 102(e) date of the granted patent is the nonprovisional filing date.

So if a second applicant comes along and, after the provisional filing date but before the nonprovisional filing date, files an application disclosing and claiming one or more of A, B and C, the granted patent is not prior art under 102(e).  This is so, even though the provisional application clearly discloses all of A, B and C, and this same disclosure was carried over into the nonprovisional specification.


Maybe this is not important.  In these circumstances, it may be possible to apply 102(g)(2) instead of 102(e).  And whichever subsection is relied upon, the later applicant remains entitled to "swear behind" the prior art date and assert prior invention.  However, it seems untidy, and it also seems strange in this day and age that the prior art effect of a document can be influenced by what the applicant ultimately elects (or is forced) to claim, rather than simply being about what is disclosed.

But our view on this may be biased by our familiarity with the Australian approach.  The law in Australia (and again this is not unique) is based on the "whole of contents" approach.  This approach does not look at what actually is claimed in the granted patent, but rather at what theoretically could have been claimed based upon the written description in the priority document.  The novelty, or otherwise, of the theoretical claims is irrelevant.  This formulation is a convenient way of tying the prior art effect to the completeness of the disclosure in the priority document.


There is, in any event, one important lesson we will take out of this: when advising clients to consider using a US provisional application in order to obtain an earlier 102(e) date we will now endeavour to be even more diligent in ensuring that the written description is as detailed as possible, and to keep an eye on whether any additions in a subsequent nonprovisional application, along with any amendments made to the claims during prosecution, may cause the patent to lose its entitlement to claim priority.

Any thoughts - contrary or otherwise - on all of this would be much appreciated.


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