After issuing a brief “notice” in 2011, shortly after the Fed. Cir. revised the duty of disclosure in the Therasense (76 FR at 43631), the PTO has now published a notice of proposed rulemaking to gather comments on its specific proposed amendments to 37 CFR 1.56(a) and (b). 81 Fed. Reg. 74987 (October 26, 2016).
Archive for the ‘Prior Art’ Category
Lately, I’ve been feeling that the only case law engaging enough to write about has involved S. 101 issues, so it was a welcome break to comment on some classic principles of organic chemistry.
Apotex filed an IPR petition that Wyeth’s U.S. Patent No. 8,879,828 was obvious in view of four references. The Board granted the petition but went on to find that the antibiotic compositions claimed in the patent were not obvious. The Fed. Cir. agreed that the Board’s final decision was supported by substantial evidence (Appeal No. 2015-1851 (Fed. Cir., August 6, 2016) —Judges Lourie, Wallach and Hughes, Lourie writing).
Yesterday a panel of Judges (Lourie, Reyna and Wallach) in Voter Verified, Inc. v. Premier Election Solutions, Appeal nos. 2011-1559, 2012-1016 (Fed. Cir. November 5, 2012) expanded on the Fed. Cir.’s earlier decision In re Lister, 583 F.3d 1307 (Fed. Cir. 2009)(archived under “Prior Art”), which in turn cited In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004), to affirm a district court’s holding that a patent on “a self-verifying voting system” was obvious in view of an article (the “Benson article”) that had been posted on the “Risks Digest Website” well prior to the 102(b) bar date.
Noting that the “key inquiry is whether the reference was made ‘sufficiently available to the public interested in the art’ before the critical date”, Klopfenstein was quoted as establishing that “Whether a reference is publicly available is determined on a case-by-case basis based on the facts and circumstances surrounding the reference’s disclosure to member of the public.”
In case you wondered if this was a settled question in the ever-shifting world of section 102, yesterday, In re Giacomini, (Rader, C.J.), (copy at end of post) the panel held that the effective U.S. filing date of a U.S. patent asserted to be prior art against a “later-filed patent” was the filing date of the corresponding U.S. provisional application claiming the same invention.
The court did not find merit in Applicants’ argument that the outcome should be controlled by In re Hillmer, 359 F.2d 859 (CCPA 1966) in which the court held that the date of a foreign-filed priority application was not the effective filing date of a U.S. patent asserted to be prior art under 102(e). If nothing else, the decision underscores the necessity of fully disclosing the invention generically and specifically in a provisional filing, even if enablement and WDR may be necessarily “iffy” for early-stage technologies.