| This post is really quite misleading. Better coverage here: https://patentlyo.com/patent/2018/07/diagnostics-provisional... The EFF writeup makes it sound like material appearing only in the specification of an earlier published patent does not count as prior art, that it must appear in the claims. That’s not true in the general case: > In the simple case outlined above, the courts all agree that the disclosures found in an issued patent or published application count as prior art as of the patent’s filing date. Ariosa addresses a very different issue. Generally, patent applications are prior art even before they are publicly disclosed—they count as prior art starting from the day of filing. Ariosa addresses what happens when you have a provisional patent application: > In this case, the Federal Circuit ruled that a published application can count as prior art as of its provisional filing date — but only as to features actually claimed in the application. According to the court, features disclosed in the provisional but not claimed in the published application will only be prior art as of their date of public disclosure. The EFF writeup is in fact completely inaccurate, because it starts by talking about a “published” patent application. Once the application is published, all agree that it is prior art. This case is about what happens between the date if filing of a provisional, and the date of publication. |