PTO Marks the Spot

In re Giacomini, No. 09-1400, 2010 WL 2674461 (Fed. Cir. July 7, 2010).

Patent applicants on a prior art treasure hunt will have a harder time after the In re Giacomini decision. In Giacomini, the Federal Circuit addressed the questions of so-called "secret prior art" under § 102(e) and specifically held that an issued patent will be considered prior art as of the date of its appropriately filed provisional patent application. Because of the large number of provisional patent applications filed each year, Giacomini means the trove of potentially patent-defeating unsearchable or "secret" prior art buried in the PTO just got significantly bigger.

Anyone got a map?

All the action in Giacomini occurred at the PTO. Inventor Giacomini filed his patent application on November 29, 2000. The patent examiner rejected the application because he discovered an identical patent which the examiner found served as invalidating prior art because it taught all of the claimed features of Giacomini's application. Though the application for that patent had been filed a month after Giacomini filed his application, the patent found to be serving as prior art had a provisional application which preceded Giacomini's filing by two months.

Giacomini appealed the examiner's decision to the Federal Circuit, arguing that the PTO's determination conflicted with the line of cases following the In re Hilmer decision. In Hilmer, the Federal Circuit's predecessor court found that a patent's 102(e) priority date does not extend to a foreign filing date under § 119. Giacomini argued that Hilmer should apply to provisional filings because, like foreign filings, provisional applications are both less formal than non-provisional filings and are governed by § 119. The Federal Circuit rejected Giacomini's argument. First, the court found that the portion of § 119 governing provisional applications was added to that section after the Hilmer decision and therefore the decision's broad language regarding the section is simply inapplicable to provisional filings. And, unlike the foreign filings in Hilmer, because provisional applications are "filed in the United States," they are well within the purview of 102(e). According to the Giacomini court, allowing a provisional application to dictate 102(e) priority best fulfills patent law's fundamental rule that the "patentee must be the first inventor."  However, in order to establish 102(e) priority, the provisional application must provide adequate written description support for the claimed invention. Here, because Giacomini never argued that the competing provisional application lacked an adequate description before the PTO, he waived any argument regarding inadequacy on appeal. As a result, Giacomini lost both his appeal and his quest for a patent.

Giacomini adds both impediment and incentives to an inventor's dreams of striking it rich at the PTO. The rewards for provisional filings just got greater and we anticipate that the pile of such applications will just keep growing-as will disputes about the adequacy of such filings. Even after a patent issues, patent holders might have to keep digging around to make sure no secret prior art from the pendency period of its application exists to imperil it rights, since that will be the first place alleged infringers might look to keep from handing over treasures of their own.

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