[ABCLAW]

I think the EFF's note is a bit confusing, because it glosses over a key nuance in the evaluation.

Here's a bit more information about the case: https://patentlyo.com/patent/2018/07/diagnostics-provisional...

Briefly: Granted patents count as prior art from their filing date. The question is what happens to provisional filings. The court has split the treatment of those documents depending on whether or not the prior art is claimed or not.

The Federal court's position is interesting, as it is a compromise position. It recognizes that the documents are not published to the public, and accordingly afford the opportunity to create so-called submarine rights, and limits the scope of these rights to the specific 'stuff' of the patent in question, while preventing the non-public remainder of the filings from popping up and cutting prospective patents down.

What's the right course of action here? Well, that heavily depends on the behavior of filers across an industry.

It is, however, clear that the federal court's position is not borne out of a consistent, principled approach. For some, that's enough for them to claim the baby needs to be tossed out without trying to address the threat of the submarines directly.

[gowld]

Is EFF mischaracterizing the case (which it often does when blogging about on patent cases)?

Is it true that provisional applications are not disclosed to the public? It seems fair that if the invention is never publicly disclosed (only mentioned in private filings), that the invention isn't covered by patent law. That's standard -- only public information is part of the patent system.

[sjrosen]

When a patent or patent application is published, all the applications it claims priority to (e.g., provisional applications) become open for public inspection.

However, patent applications can act as prior art as of the day they are filed, which is often well before they are published. The justification for this is that, even though the information is not yet public, the applicant has established that they know that information and that it will be disclosed to the public when the patent publishes.

The question in Ariosa Diagnostics v. Illumina is whether the provisional application can also act as prior art as of its filing date. The court's decision was that only the material from the provisional application that was later claimed in the published patent counts as prior art as of the filing date. Everything else in the provisional application only counts as of the publication date.