"Secret" prior art: does prior art in a provisional patent application bar future patents?

AuthorGottuso, Kyle
PositionCase note

In re Giacomini, 612 F.3d 1380 (Fed. Cir. 2010).

  1. INTRODUCTION

    The recent case of In re Giacomini presented the United States Court of Appeals for the Federal Circuit with the issue of whether a provisional patent application could contain prior art that would bar a subsequent patent from registration. In this matter of first impression, the Federal Circuit interpreted the plain language of 35 U.S.C. sections 102(e) and 119 as permitting a provisional patent application to shift a patent application's priority date, thereby enabling prior art to be found in an otherwise unpublished provisional patent application. (1) With this ruling, the Federal Circuit increased the scope of "secret" prior art that is unavailable to an inventor until well after his patent filing.

    Giacomini could prove problematic because provisional patent applications are not published to the public, (2) and thus an inventor--even one who researches diligently--may be unable to discover this "secret" prior art. Erroneously believing that nothing will prevent the granting of a patent, this inventor will continue to invest time and resources into developing his invention only to have his patent application denied due to the later revelation of the previously undiscovered provisional patent application. Though the Federal Circuit barely touches on this issue of "secret" prior art, its ruling will have this very consequence. Thus, it appears that the court has expanded section 102(e) further than it intended.

    This Note will examine whether prior art found in a provisional patent application can (and should) act as prior art to defeat a subsequent application by a second inventor. In looking at this issue, this Note will ask if Giacomini can be reconciled with the principles and policies that underlie patent law. To do so, this Note will first review the facts and holding of Giacomini. (3) Then this Note will survey the patent statutes, giving particular attention to those statutes that deal with priority and prior art. (4) Next, this Note will examine the reasoning of the Giacomini court. (5) Finally, this Note will look at that reasoning in light of 35 U.S.C. sections 102(e) and 119 and the policy concerns behind these statutes, concluding that Giacomini expands section 102(e) beyond its intended purpose. (6)

  2. FACTS AND HOLDING

    Four men--Peter Joseph Giacomini, Walter Michael Pitio, Hector Francisco Rodriguez, and Donald David Shugard (hereinafter referred to as "Giacomini Group")--invented a new selective storing cache system that "efficiently populat[es] a cache with resources." (7) Shortly after conception and reduction to practice, the Giacomini Group sought protection on its invention by filing a nonprovisional patent application on November 29, 2000, with the United States Patent and Trademark Office. (8) As its first claim, the Giacomini Group's patent application listed the following: "A method comprising: populating a cache with a resource only when at least i requests for said resource have been received; wherein i is an integer and is at least occasionally greater than one." (9) Simply put, this invention relates to a means of selectively storing data gathered on the Internet. (10)

    The method of "selectively storing data" can best be explained in terms of the World Wide Web. (11) When one requests a website over the Internet, the request travels from "the user's computer to the Web server that has the page." (12) As the requests for this page filter in, the server has to fulfill all of these thousands of requests, which often leads to congestion. (13) In order to help with this congestion problem, Web servers use "auxiliary Web servers" (also known as a "cache") that help direct some of this traffic. (14) Since a cache is made up of physical memory, it has a finite amount of space. (15) Because of this, a cache is most helpful when it is designed to efficiently decide "which resources are stored in the cache and when." (16) If the cache is designed this way, it becomes more efficient and cuts down on the congestion problem. The Giacomini Group's invention did just this: It decided which resources were stored in a cache and when. (17)

    After the Giacomini Group filed its patent application for the selective storing technique, the primary patent examiner rejected the claim and denied the patent. (18) The examiner rejected the Giacomini Group's patent application because it was anticipated by prior art found in the "Tran" patent, as well as the "Teoman" and "Chamberlain" patents. (19) After the Giacomini Group received a non-final rejection of its claim, it appealed to the Board of Patent Appeals and Interferences (hereinafter "Board"). (20)

    On appeal, the Board affirmed in part and reversed in part the Primary Patent Examiner's rejection of the Giacomini Group's patent. (21) The Board found that the Examiner erred in finding that the Teoman and Chamberlain patents were prior art to the Giacomini Group's patent, and the Board therefore reversed this portion of the patent examiner's decision. (22) As to the Tran patent, the Giacomini Group argued to the Board that its patent was not anticipated by prior art contained within the Tran patent, and the patent examiner had therefore erred in rejecting the Giacomini Group patent on this separate ground. (23)

    The crux of the Giacomini Group's argument to the Board was that the Tran patent should not be considered prior art because the 102(e) filing date (24) was December 29, 2000, which was after the filing date of the Giacomini Group's patent, November 29, 2000. (25) The Giacomini Group argued that because its patent application was filed before the Tran patent, the Tran patent could not possibly contain prior art. (26) In addition to this argument, the Giacomini Group argued that Tran does not qualify as prior art because the provisional patent application should not lead to a shifting of the priority date and a finding of effective prior art. (27)

    After hearing the Giacomini Group's argument, the Board affirmed the section 102(e) rejection of the Giacomini Group's patent, stating the appropriate date for determining domestic priority is not the date of the patent application, but the date of the provisional patent application. (28) To this end, the court noted that the date of the Tran provisional patent was September 25, 2000, which preceded the filing of the Giacomini Group's patent on November 29, 2000, by almost exactly two months. (29) The Board reasoned that 35 U.S.C. [section] 119(e) "shifted the effective reference date of Tran's patent to the effective reference date of Tran's provisional." (30) The Board also held that, as a matter of law, a provisional patent can contain prior art that will anticipate a subsequently filed application. (31) The Giacomini Group appealed this point of law directly to the United States Court of Appeals for the Federal Circuit. (32)

    On appeal, the Giacomini Group presented the same arguments to the Federal Circuit. (33) The Federal Circuit focused its decision on whether a provisional patent can be used to anticipate a patent for purposes of prior art. (34) The court first looked at both the text and the underlying policy of 35 U.S.C. [section] 102(e) to determine whether a provisional patent could constitute a valid filing date for prior art. (35) The court found that both the statute's language (36) and the patent law policy of preemption (37) dictated that the court should affirm the Board's ruling. Therefore, the court held that because the first inventor is entitled to the patent for the invention, a provisional application "shows that someone else was the first to invent." (38) The court reasoned that failing to affirm the Board's decision would "create an anomalous result [in which] someone who was not the first to invent in the United States receives a patent." (39) Because of this, the Federal Circuit affirmed the Board's rejection of the Giacomini Group's patent. (40)

  3. LEGAL BACKGROUND

    This section will be broken down into three distinct parts. First, this section will explore the history of American patent law and its foundational "first to invent" principle. Next, this section will address two of the requirements of patentability: Novelty and nonobviousness. The sections on novelty and nonobviousness will attempt to tie together these patent ideas with the principle of the "first to invent." The third and final part of this section will survey the statutes of Title 35 and its effect on the patent principle of prior art. Title 35 section 102(e) and the principle of prior art need to be covered in this part of the Note because it is important to understand the history of this patent law theory to see how the holding in the instant decision has expanded the theory behind prior art beyond its underlying policies.

    1. General Historical Framework and the Idea of the First to Invent

      Patent law seeks to award a patent to the first person to create a protectable invention. To that end, the Supreme Court has stated, "the patentee must be the first inventor." (41) However, achieving this goal is often easier in theory than in practice due to the difficulties of determining who the "first" inventor is. Responding to this problem, Congress codified the rules for "loss of right to patent" in the 1952 Patent Act. (42) While it remains true that the policy and theory of patent law is to give the first to invent priority for the patent, the statutes of the 1952 Patent Act govern the right of priority of patents. (43) Under that body of law, the issue of "first priority" and prior art relating to provisional patents is a complicated process of statutory interpretation, and it was an issue of first impression for the Federal Circuit in Giacomini. (44)

      Policy and historical reasons underlie the current rule in the United States that patents are granted to the first to invent, rather than the first to file for an application. The United...

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