Obviousness and Secret Prior Art

Posted Monday, January 2, 2012.

Recently, I blogged about “secret prior art.” To review, because the USPTO conducts patent proceedings confidentially, it is possible to conduct a thorough patent search for an invention and file an application for the apparently-novel invention, only to find that another inventor filed for the exact same thing three months earlier. Even if one pays a patent attorney or patent agent to conduct a search and that practitioner gives the green light, because nobody knows what is pending at the USPTO that’s been filed recently, we may find a different application is pending that anticipates our invention. That other pending application is called “secret prior art.”

Anticipation in patent-speak is when another invention for which an application was filed earlier has every aspect of the invention for which we are filing. Another type of rejection at the USPTO is an “obviousness” type rejection. I previously blogged about obviousness recently as well. Essentially, an invention is held obvious when it combines elements from more than one already-known inventions in a way that renders the new invention non-obviousness.

Let’s say you wanted to patent a highlighter pen that had a tape flag dispenser. Highlighter pens are known, as are tape flag dispensers. The result of combining the two would be that everywhere you needed to highlight, you’d also have tape flags at your disposal. This is a likely combination to get rejected by the USPTO for obviousness, because the results of the combination would be predictable.

But let’s say that tape flag dispensers in fact weren’t publicly available when you filed your application for the combination highlighter pen and tape flag dispenser. And it turns out that someone had filed an application for a tape flag dispenser a month before we submitted the application for the combination. Is the combination still obvious?

In this example, the application for the tape flag dispenser would be secret prior art. We’ve already seen how secret prior art can torpedo a patent application by anticipating the invention. Does secret prior art apply in an obviousness-type rejection? After all, in an obviousness-type rejection, the USPTO is asserting that it would have been obvious to combine two existing technologies, but if one of the two is secret prior art, then by definition the inventor of the combination couldn’t have known about it. Why exactly would it have been obvious to combine something nobody knew about?

Conceptually, the answer to this question is exactly the same as in the secret prior art for anticipation instance. With respect to anticipation and secret prior art, the Supreme Court held in Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926) that in a perfect world where the USPTO issued patents the day the application was filed, there would be no secret prior art, and that just because we don’t have this hypothetically-perfect USPTO we shouldn’t start making exceptions to the patent laws where two inventors can get patents on the exact same thing.

For obviousness, it’s the same rationale. If there was a USPTO that issued patents the day the application was filed, there would be no secret prior art for obviousness either. In our combination highlighter / tape-flag dispenser case, the tape-flag dispenser would be known by the time we filed for our combination device, and a patent search would have yielded it. The Supreme Court ruled on these very circumstances (an obviousness rejection using secret prior art) in 1965 (Hazeltine Research, Inc. v. Brenner), holding that the rationale articulated in the 1926 Alexander Milburn case for anticipation still held true for obviousness.

Interestingly, in most foreign jurisdictions, secret prior art may not be used in an obviousness-type (aka “inventive step”) rejection.

But in the U.S., secret prior art is becoming more of an issue as patent application backlogs increase. The longer it takes for an application to issue as a patent, the more secret prior art there is. Let’s hope that the recent increase in funding for the USPTO in the America Invents Act of 2011 brings down the application backlog, and thus, cuts down on the universe of secret prior art.

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