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[TataBox]

Lets say we have a provisional and a non-provisional filed.  The application gets granted and enforced in court.  The other side figures out that the claims asserted do not have support in the provisional, therefore, they are not entitled to the priority date, essentially freeing their client from infringement because they were making, using selling, importing the invention prior to the NPA filing date.

Can there be an argument that invalidates the patent based on fraud on the office, e.g. knowing that the material was not in the provisional.  I generally do not file provisional applications, is there a statement that indicates, like in office actions, that no new material has been added when the NPA is filed?  I would think there would be grounds.

[bleedingpen]

Lets say we have a provisional and a non-provisional filed.  The application gets granted and enforced in court.  The other side figures out that the claims asserted do not have support in the provisional, therefore, they are not entitled to the priority date, essentially freeing their client from infringement because they were making, using selling, importing the invention prior to the NPA filing date.

Can there be an argument that invalidates the patent based on fraud on the office, e.g. knowing that the material was not in the provisional.  I generally do not file provisional applications, is there a statement that indicates, like in office actions, that no new material has been added when the NPA is filed?  I would think there would be grounds.

I don't think so on fraud/IC grounds.  I think you have a clear 102 example then.  See VanMoor v Walmart.

[JimIvey]

I agree it's not a fraud issue.  However, a number of patent claims have been invalidated to lack of enablement in a provisional application.  I suspect bleedingpen has pointed one such case out.

One little nit here, however, is that the application/priority date is not necessarily the date at issue, so I wouldn't say that the accused party is out of the woods yet.  In particular, the fact that the accused might have practiced the invention prior to the effective priority date does not clear them of anything, unless the practice amounts to invalidating prior art.  And, other prior art might invalidate one or more claims by loss of the earlier priority date. 

Section 102 tends to speak in terms of one year prior to filing or the date of invention.  The latter can be, but isn't necessarily, the filing date of an enabling application.

Regards.

[TataBox]

Thanks.  I was under the impression there was some kind of doctrine of prior user rights.  That if a company has been using the patented method, but such use does not fall under 102, that company is provided some kind of indemnity.  This seems to maybe happen in cases of trade secret?  Not sure.

[JimIvey]

Nope.  Either your prior use is prior art or its not.

Between a prior user relying on trade secret protection and a later user with a patent, the law favors the latter.

The one exception is for "business method" patents, but the law doesn't define what that is and I've never heard of that statute being invoked.

Regards.

[BobRoberts]

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless -

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or ...

"One little nit here, however, is that the application/priority date is not necessarily the date at issue, so I wouldn't say that the accused party is out of the woods yet.  In particular, the fact that the accused might have practiced the invention prior to the effective priority date does not clear them of anything, unless the practice amounts to invalidating prior art. "

Just wondering what is meant by 'invalidating prior art' with regards to a trade secret, if the use was before invention conception.  Don't have many facts here, however, it's possible that the prov. may not have disclosed (this portion of) the invention because it was just poorly drafted, or because that portion of the invention was not really conceived yet, and was later added to the non-prov. to try to capture an infringer.  Again, we have very little facts/circumstances here. 

If the other party can show that they were using or had known of the invention prior to the Non-prov., but after the non-enabling provisional, it would seem that at that stage, they are safe under 102 (a), wouldn't it?  Or has "known" and "in use" been interpreted by the courts to mean "known in public" or "clearly used in public".  Perhaps the 102 (a) provision can only be used to invalidate a patent before issuance?  Now it seems that your company will have to show that they conceived the invention prior to the other Companies first use/knowledge (even if it's with a combo of lab notebooks and the provisional).  (this was really not a part of the original post, as that dealt with possible fraud, and I have assumed a lot here, but no information seemed to have been present either way, so thought I'd bring it up.)

"I was under the impression there was some kind of doctrine of prior user rights.  That if a company has been using the patented method, but such use does not fall under 102, that company is provided some kind of indemnity."  In a sense, there is, isn't there?  That is, absent provisional rights, a patent is not enforceable until issuance, and then not retroactively.  However, it is still enforceable for the x years after the patent issued, provided it is not found invalid/unenforceable). 

Going to get my flame-retardant suit...

[JimIvey]

I'll just note that "invention date" is not necessarily the effective (as in enabled) priority date.

In addition, check out MPEP 2132:

I.    "KNOWN OR USED"

"Known or Used" Means Publicly Known or Used

"The statutory language 'known or used by others in this country' (35 U.S.C. § 102(a)), means knowledge or use which is accessible to the public." Carella v. Starlight Archery, 804 F.2d 135, 231 USPQ 644 (Fed. Cir. 1986). The knowledge or use is accessible to the public if there has been no deliberate attempt to keep it secret. W. L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983).

Prior use, if not publicly accessible, is not prior art.

Regards.