Post-Factum, Riskless Selection of a

Patent Term Starting Date

Analysis of US Practice and Comparison to

European and Japanese Practices

Betsalel Rechav

Intro

Is it possible to select a starting date for your

patent term?

Generally, the patent term begins on the filing date

of the patent application. However, often this date

may be out of sync with various constraints

associated with commercializing the invention.

This presentation addresses the topic of whether it

is possible to select a patent term starting date,

without bearing the risk that accompanies

postponed filing.

Disclaimer

The author of this presentation and its contents is not a US patent

attorney and does not have a Law degree of any kind. Accordingly, the

contents of this presentation may include factual, analytical or logical

mistakes, misinterpretations and even speling mistakes or nardom or

typographcal errors.

All information, analyses, suggestions or insinuations in this

presentation are provided as an academic exercise and Intellectual

entertainment for voluntary viewers. No part of this contents is intended

to be a legal or any other advice, and may not be construed as such.

The author expressly disclaims any responsibility or liability for any

adverse consequences or damages resulting from considering or relying

on this presentation or portions thereof.

Outline

Timing is everything

What’s the trick?

2nd Application Novelty Analysis

Double Patenting Analysis

Other Issues (Grace Period, PC 4C(4), Latches,

Practical Aspects)

What’s in Europe?

What’s in Japan?

Conclusions

I.

Timing is Everything

Patent Term Duration

A patent may be granted for an invention

claimed in a patent application, for the duration

of the patent term.

The patent term for a (non-provisional, utility-)

patent is, nominally, 20 years in mostly all

countries in the world.

The patent term begins on the date of filing the

(non-provisional) application for the patent.

When to file?

When in the possession of an invention one can… File a patent application immediately, or

Wait; postpone the filing date and hence the expiration date of the patent. Prior to filing, maintain the invention confidential as a trade secret.

Reasons for “pushing forward” the patent term: Timing the invention with available technology;

Timing with company’s capacity (management, financial, development, manufacturing);

Timing with the market;

Timing constraints due to laws and regulations.

The strategic inventor’s dilemma

filing a patent application at the time of the invention might prove premature and end up loosing a portion of the patent term due to miss-coordination with internal or external timing constraints;

BUT

Waiting faces a considerable risk that someone else would invent the same invention and file for it a patent application in the meantime – ending up in loosing the patent completely.

The $$$ question

Is it possible to delay the starting

date of the patent term without

bearing the risk of loosing the

patent altogether?

II.

What’s the Trick

Enabling Patent Term Starting Date Selection

Identify a first invention A for which Patent Term

Starting Date Selection is desired;

Identify a second invention B, sufficiently

unrelated to A;

File a first patent application that includes

enabling descriptions of both A and B, and which

claims B;

After 18 months (before the first application

publishes) file a second patent application that

includes an enabling description of A, and claims

A.

How Does it Work (I)?

The examination of the second application

is not affected in any way by the prior

existence of the first application (as is

further explained below). Therefore:

If invention A, as claimed in the second

application, is not rejected, then a patent is

granted starting from the filing date of the

second application.

How Does it Work (II)?

If, however, invention A is rejected due to prior

art dated to the period of 1.5 years between

the first and second applications…

The second application is abandoned, and a

continuation application to the first application

is filed, claiming invention A.

(Obviously, if invention A, as claimed in the second

application, is rejected due to prior art dated earlier

than the first application, then invention A is not

patentable to begin with).

So, what’s the bottom line?

The applicant gets to select the patent term

starting date for invention A:

By default, the patent term would start at the

filing date of the second application…

…but if the applicant desires – for example, if

the later date is too late compared to some

prior art, or for any other reason – the

applicant may safely retreat to obtain a patent

for A as of the filing date of the first application.

III.

2nd Application

Novelty Analysis

The First Application isn’t Novelty Destroying

35 U.S.C. 102 Conditions for patentability; novelty.

(a) A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a

printed publication, or in public use, on sale, or

otherwise available to the public before the effective

filing date of the claimed invention;

_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _

Patented?

Described in a printed publication?

In public use?

On sale?

Otherwise available to the public?

…Before the effective filing date of the claimed invention

NO

Or

(2) the claimed invention was described in a patent

issued under section 151, or in an application for

patent published or deemed published under section

122(b), in which the patent or application, as the

case may be, names another inventor and was

effectively filed before the effective filing date of the

claimed invention.

_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _

The 1st application may not be used as

a basis for a 102/103 rejection of the

2nd application.

The First Application isn’t Novelty Destroying

IV.

An Excursion to

Double Patenting

Double Patenting Rejection

MPEP 804 Definition of Double Patenting [R-

07.2015]

“The doctrine of double patenting seeks to prevent the

unjustified extension of patent exclusivity beyond the

term of a patent.”

“The doctrine of nonstatutory double patenting also

seeks to prevent the possibility of multiple suits against

an accused infringer by different assignees of patents

claiming patentably indistinct variations of the same

invention.“

Not Applicable!

Note that Patent Term Starting Date

Selection does not cause neither

“extension of patent exclusivity beyond

the term of a patent” nor “patentably

indistinct variations of the same

invention.“

Statutory vs. Non Statutory

Double Patenting rejection

Statutory (same invention)

35 U.S.C. 101 “whoever invents or discovers any new and useful process... may obtain a patent therefor...”

Nonstatutory (Obviousness type,

Not patentably distinct) a judicially created doctrine grounded in public policy… intended to prevent prolongation of the patent term …”

Statutory Double Patenting

(Same Invention)

obligatory rejection form paragraph

8.31 Rejection, 35 U.S.C. 101, Double Patenting Claim [1] is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim [2] of prior U.S. Patent No. [3]. This is a statutory double patenting rejection.

¶ 8.32 Provisional Rejection, 35 U.S.C. 101, Double Patenting Claim [1] provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim [2] of copending Application No. [3] (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.

Non-statutory Double Patenting

I. No Secondary Reference(s)

obligatory rejection form paragraph

¶ 8.34 Rejection, Nonstatutory Double Patenting Claim [1] rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of U.S. Patent No. [3]. Although the claims at issue are not identical, they are not patentably distinct from each other because [4].

8.35 Provisional Rejection, Nonstatutory Double Patenting Claim [1] provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of copending Application No. [3] (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because [4]. …

Non-statutory Double Patenting

II. With Secondary Reference(s)

obligatory rejection form paragraph

¶ 8.36 Rejection, Nonstatutory Double Patenting Claim [1] rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim [2] of U.S. Patent No. [3] in view of [4]. [5]

8.35 Provisional Rejection, Nonstatutory Double Patenting Claim [1] provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of copending Application No. [3] (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because [4]. …

Non-statutory Double Patenting

III. Rejection Based on Equitable Principles In re Schneller, 397 F.2d 350, 158 USPQ 210, 216 (CCPA 1968):

“[I]n appellant’s own terms: The combination ABC was old. He made

two improvements on it, (1) adding X and (2) adding Y, the result still

being a unitary clip of enhanced utility. While his invention can be

practiced in the forms ABCX or ABCY, the greatest advantage and best

mode of practicing the invention as disclosed is obtained by using both

inventions in the combination ABCXY. His first application disclosed

ABCXY and other matters. He obtained a patent claiming [a clip

comprising] BCX and ABCX, . . . so claiming these combinations as to

cover them no matter what other feature is incorporated in them, thus

covering effectively ABCXY. He now, many years later, seeks more

claims directed to ABCY and ABCXY. Thus, protection he already had

would be extended, albeit in somewhat different form, for several years

beyond the expiration of his patent, were we to reverse.”

Rejections Based on Schneller

…Will Be Rare

“Nonstatutory double patenting rejections based on

Schneller will be rare. The Technology Center (TC) Director

must approve any nonstatutory double patenting rejections

based on Schneller. If an examiner determines that a

double patenting rejection based on Schneller is

appropriate in his or her application, the examiner should

first consult with his or her supervisory patent examiner

(SPE). If the SPE agrees with the examiner then approval

of the TC Director must be obtained before such a

nonstatutory double patenting rejection can be made.“

Non-statutory – How do We Draw the Line?

MPEP 804

B. Nonstatutory Double Patenting

“In determining whether a nonstatutory basis

exists for a double patenting rejection, the

first question to be asked is: is any

invention claimed in the application

anticipated by, or an obvious variation of, an

invention claimed in the patent? If the

answer is yes, then a nonstatutory double

patenting rejection may be appropriate.”

“To avoid improper reliance on the disclosure of a reference

patent or copending application as prior art in the context of

a nonstatutory double patenting analysis, the examiner

must properly construe the scope of the reference claims.

The portion of the reference disclosure that describes

subject matter that falls within the scope of a reference

claim may be relied upon to properly construe the scope of

that claim. However, subject matter disclosed in the

reference patent or application that does not fall within the

scope of a reference claim cannot be used to construe the

claim in the context of a nonstatutory double patenting

analysis as this would effectively be treating the disclosure

as prior art.“

Non-statutory – This is the Line

Non-statutory Double Patenting

Claim [1] provisionally rejected on the ground of nonstatutory double patenting over claim [2] of copending Application No. [3]. This is a provisional double patenting rejection...

The subject matter claimed in the instant application is fully disclosed in the referenced copending application and would be covered by any patent granted on that copending application since the referenced copending application and the instant application are claiming common subject matter, as follows: [4]

Furthermore, there is no apparent reason why applicant would be prevented from presenting claims corresponding to those of the instant application in the other copending application. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.

Improper Timewise Extension of Patent Rights (With Another Application)

obligatory rejection form paragraph

The Paradox of Roles Swapping

For the Examiner to reject claims in a pending application

for ‘Double Patenting’ while referencing another

application but without relying on any actual claims to the

same subject matter in the other application, the

Examiner would need to:

argue that such claims would have been fully allowed, had them

been claimed in the other application…

…while the applicant, in an attempt to overcome the rejection,

argues the opposite.

The 1st application, while claiming invention B, may

not be a basis for Double Patenting rejection of the

2nd application claiming invention A.

V.

Related Issues

• Priority Applications

• PC 4C(4)

• Grace Period

• Practical Aspects

Priority – US Provisional Application

USC 119 (e) (1) An application for patent … for an invention disclosed … in

a provisional application … shall have the same effect, as

to such invention, as though filed on the date of the

provisional application…, if the application for patent… 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...

Any one of the first and second applications

may legally claim priority from a respective,

earlier-filed provisional application.

Priority– Foreign Application

USC 119 (a) An application for patent… filed… by any person who

has… previously regularly filed an application for a patent

for the same invention in a foreign country… shall have the

same effect as the same application would have if filed in

this country on the date on which the application… was first

filed in such foreign country, if the application in this country

is filed within 12 months from the earliest date on which

such foreign application was filed…

A foreign application may not be used for a

priority claim for the second application.

Priority– PC 4C(4)

USC 119 (c) In like manner and subject to the same conditions and

requirements, the right provided in this section may be

based upon a subsequent regularly filed application in the

same foreign country instead of the first filed foreign

application, provided that any foreign application filed prior

to such subsequent application has been withdrawn,

abandoned, or otherwise disposed of, without having been

laid open to public inspection and without leaving any rights

outstanding, and has not served, nor thereafter shall serve,

as a basis for claiming a right of priority.

Grace Period

35 U.S.C. 102 Conditions for patentability; novelty.

(a) …

(b) EXCEPTIONS.

(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE

THE EFFECTIVE FILING DATE OF THE CLAIMED

INVENTION.

A disclosure made 1 year or less before the effective

filing date of a claimed invention shall not be prior art to

the claimed invention under subsection (a)(1) if—

(A) the disclosure was made by the inventor or joint

inventor or by another…

Grace Period

Obviously, the Examiner is barred from citing the first

application against the second application for 1 year

after the first application publishes, namely for 2.5 years

after the first filing.

In principle, then, one can obtain a patent term delay of

2.5 years with the 2nd application relative to the 1st.

However the publishing of the 1st application might

increase the likelihood of someone else filing an

application to a similar subject matter thus ruining the

novelty or inventiveness of the 2nd application.

Latches

The scenario described here might be interpreted as violating the Doctrine of Latches, namely deliberately causing an unreasonable delay in claiming one’s rights.

However, as is probably evident to any person involved in innovative activity, identifying A as a (patentable) invention may not always be straightforward, especially if one focuses on inventing or improving B.

Therefore, the chronological sequence of events by which one describes in a first patent application invention B, then files a second application for A, and then discovers that A is claimable from the first patent application – may well be a natural one, involving no imprudence nor misconduct of any sort.

For example: B is a device, and A – a method which is enabled (namely including a step which is performed) by the device.

Failure to identify an invention as patentable does not indicate dispossession of the invention.

VI.

What’s in Europe?

Novelty and IS in the EPC

EPC Article 54 Novelty

(1) An invention shall be considered to be new if it does not form part of the state of the art .

(2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application .

(3) Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art .

(4), (5) ( Medical use and second use )…

EPC Article 56 Inventive step

An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents shall not be considered in deciding whether there has been an inventive step .

PTSDS According to the EPC

The first application is always novelty-

destroying to the second application.

Patent-Term Starting Date Selection is

impossible according to the EPC

VII.

What’s in Japan?

Novelty in Japan

Patent Act Chapter 2 Article 29( 1(

An inventor of an invention that is industrially applicable may be entitled to obtain a patent for the said invention, except for the following cases:

(i) inventions that were publicly known in Japan or a foreign country prior to the filing of the patent application;

(ii) inventions that were publicly worked in Japan or a oreign country prior to the filing of the patent application; or

(iii) inventions that were described in a distributed publication, or inventions that were made publicly available through an electric telecommunication line in Japan or a foreign country prior to the filing of the patent application .

Prior disclosure of an invention in an un-published patent

application (either by the inventor or by another) is not

novelty destroying, and preventing double patenting is

covered by double patenting clauses in the Law

Secret Prior Art or “Whole Content Approach”

When The Inventors Of The Two Applications Are Not The Same…

Patent Act Chapter 3 Article 29-2

Where an invention claimed in a patent application is identical with an

invention or device (excluding an invention or device made by the

inventor of the invention claimed in the said patent application)

disclosed in the description, scope of claims or drawings… which has

been filed prior to the date of filing of the said patent application and

published after the filing of the said patent application…, a patent shall

not be granted for such an invention notwithstanding Article 29(1);

provided, however, that this shall not apply where, at the time of the

filing of the said patent application, the applicant of the said patent

application and the applicant of the other application for a patent or for

registration of a utility model are the same person.

Double Patenting

Patent Act Chapter 4 Article 39

(1) Where two or more patent applications claiming identical inventions

have been filed on different dates, only the applicant who filed the patent

application on the earliest date shall be entitled to obtain a patent for the

invention claimed .

…

JPO English Guidelines to the Ptent Act: 2 . Each item of Article 39 :

2.1 Article 39) 1)

2.1.1 The subject of determination of Article 39

(1) Inventions of the subject of determination whether inventions are the

same or not pursuant to Article 39 are “the claimed invention .”

In Japan, apparently, an earlier application disclosing

invention A but claiming invention B, (and having a same

inventor as the later application) will not affect the

examination of the later application.

VIII.

Conclusions

Conclusions

There seems to be no formal impediment, nor prima

facie inequitable conduct involved, in employing “Patent

Term Starting Date Selection” according to US practice.

The sequence of filing the applications and claiming the

inventions must be reasonably rooted in the natural

overall behavior of the applicant.

In Europe, novelty definition restricts an applicant from

claiming an invention in a later application.

In Japan PTSD Selection seems to be possible.

Thank You