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[ManOfManyBadIdeas]

Here are my questions:

Looking through prosecution histories, I have come across somethings that
is perhaps well known to everyone here, but was new to me. Apparently,
if you own a patent, its teachings cannot be used in an obviousness rejection
against you (section 103(c)).

My questions:
Does it mean that one can make an obvious improvement to a patent and
still patent it, if you own that patent?

Does the same rule exist in other countries and does it apply to foreign
patents as well?

[DogDayPM 9er9er9er]

...Apparently, if you own a patent, its teachings cannot be used in an obviousness rejection against you (section 103(c)).

Speaking first to US law, this is only partially correct.  If the reference publication/patent is owned by the same entity (or even just subject to an obligation of assignment to the same entity at the time of invention), then the reference pub/pat can not be used in 103 if it published after the application's filing date.  A patent or pub that was filed before your app's filing date, but publishes after your app's filing date, is said to be prior art only under 35 USC section 102(e).  And a 103 rejection using same is often referred to as a "103/102(e)" rejection.  The Examiner will still make this rejection, and then the burden is on the applicant to make a statement on the record that shows why the reference must be removed from consideration as prior art under section 103.  The reference may still be used in an anticipation rejection under section 102(e) if it anticipates your claims*.  And if the reference was published before your filing/priority date, you can't remove from consideration under 103.

*I've had examiners do exactly that.  After I removed a reference from 103 consideration, the examiner came back and said that the reference "inherently" disclosed the items that were previously deemed missing from the reference.

Does it mean that one can make an obvious improvement to a patent and still patent it, if you own that patent?

Yes, but only if you fit within the timelines described above such that the reference is prior art only via section 102(e).

Does the same rule exist in other countries and does it apply to foreign patents as well?

Somewhat different from the US in most places.  First, in most cases what we would call 102(e) art (filed before you, published after your filing) is referred to as "novelty-only art".  That means it can not be used against you in any wise in an inventive step (obviousness) rejection.  For most non-US jurisdictions, that is.  Therefore, there's no need of "removing" the co-owned reference.  As in the US, though, if the reference was filed and published before your application filing/priority date, it can be used against you for all purposes and ownership is of no importance.

[ManOfManyBadIdeas]

Thank you for a very informative answer.

[JimIvey]

Does it mean that one can make an obvious improvement to a patent and still patent it, if you own that patent?

Yes, but only if you fit within the timelines described above such that the reference is prior art only via section 102(e).

Let me just expand a bit on this.

Consider that, after an application is filed, you come up with a really significant enhancement for which you'd like specific protection.  In other words, even if no claim from your prior application survives, a claim drawn to this new improvement would be valuable.

You can't add it to the prior application -- it would be new matter.

If you file a CIP, it won't help.  I believe that, long ago, individual elements of claims had different priority dates in CIP applications.  That's clearly not the law now, and I might have just learned it wrong originally.  So, even by claiming priority, your own parent application can be prior art for the elements of your CIP claims taught by the parent application.

So, without 103(c), you could only get protection for your improvement if it's non-obvious in view of your prior work.  So, what's wrong with that?

Well, if you had included that improvement in your original application, you would be able to get such a claim without having to overcome your own work.  So, without 103(c), you must include everything in each application or you're out of luck.  It just seems more fair to not let patentability hinge entirely on where one application stops and the other begins.

I was told by European counsel that CIPs (or whatever they call them over there) need to be novel over your prior application by not non-obvious.  Seems to be the same there as here.

Of course, if all claims in your parent are not patentable, all that prior art would be applicable to the CIP, too.  However, given the nature of your own work, your parent application might have provided the motivation or suggestion to combine the subject matter of the parent with the new matter in the CIP.  That could easily make the difference between allowability and not.

In my mind, 103(c) makes good sense.

Regards.

[bartmans]

I was told by European counsel that CIPs (or whatever they call them over there) need to be novel over your prior application by not non-obvious.  Seems to be the same there as here.

This statement cries for correction (sorry James). Continuations-in-part applications are typical for the US and (as far as I know) not available in any other country, certainly not under the EPC.
In the EPC we only know that you can rely on earlier filed applications through the claiming of priority. This, thus automatically limits the period of 'extending the subject matter of your application' to a maximum of 1 year (and one day). Of course, you would be able to construct a string of applications: if EP-A only has subject matter A, and an EP-B is filed claiming priority to EP-A, but which additionally has subject matter B, then for that subject matter B only EP-B can serve as a priority document for a next EP-C (and so on).

Indeed, as has been said earlier in this trail, if your application EP-X is preceded by an earlier filed application EP-Y whihc was only published after filing of EP-X, then EP-Y is only relevant for novelty purposes and not for inventive step. This follows from Art. 54(3) and (4) EPC.

Regards.

[ManOfManyBadIdeas]

Jim, thanks for your thoughts. My original question stemmed from incorrectly
understanding the 103(c). But wrong understanding seemed logical, and I obviously
wasn't alarmed that this is the first time I came across such information .
I thought that patent owner can add the improvements to the patent, regardless
of whether the patent is published or not. And even though DogDayPM 9Cubed made the
reality of the legal situation very clear, and you made the motivation to have
this ability in place clear as well, I think giving the patent owner the right to
add obvious improvements to the patent would also be ok. As long as the term
of such "improvement" patents is the same as the original.

So, the motivation would be to protect the improvements to the patent without
having to mess with the obviousness analysis at the patent office. Frankly, I was
stunned to see the quality of my rejection, and I was equally stunned to see some
of the patents that survived obviousness analysis when I was looking through
prosecution histories. I think you have mentioned it in some thread that courts
recognize that the invention is not cast in stone, and improvements are constantly
made, hence doctrine of equivalents, and some broadness given to claim language.
But, again, court interpretations are unpredictable. Giving the inventor ability to
add to the patented matter throughout the life of the patent wouldn't be too bad
a choice, at least at first glance. For non-obvious matter that ability exists already,
and the patent term is reset for non-obvious matter. So, how about obvious matter?
Why not give an inventor a choice: if he/she thinks it's non-obvious, patent it.
If he/she thinks it's obvious, do an "addendum" patent. That way the inventor doesn't
have to worry about the possibility that an obvious improvement would be patented
by a competitor, and having to litigate, and what not. Sure, an obvious improvement is
likely to be protected by original app claims, and then simple publication of the improvement
will ensure protection and non-issue of any patent. But I am not sure every obvious
improvement is of this type. So to me having this "addendum" patent makes sense.
Make it:
1. Have the same term as the "parent"
2. Parent is excluded from any 103 rejection
3. Relevance test: "addendum" is not enabled if the parent's spec is excluded.
4. Any of the new material added to the "parent" spec must be novel (no portion of it can be found
in prior art).

I think it would encourage continuous disclosure. The inventors/companies would be keen to keep
disclosing any new developments because they will get better protection.

EDIT: I do realize that this post is more proper on improvement patent board, but it's
kind of proper here as well (historically).