Patents should only be granted to novel (i.e., new) inventions. If the goal of an intellectual property regime is to incentivize the creation of new works, granting a monopoly for an idea that isn’t new hasn’t incentivized anyone to create something new.
But in a recent decision from the U.S. Court of Appeals for the Federal Circuit in Ariosa Diagnostics v. Illumina, the judges ruled that a published patent application shouldn’t be considered prior art for the purposes of patent granting. From Alex Moss at Electronic Frontier Foundation,
According to the court, the description didn’t qualify as material that could invalidate the patent being challenged because it did not appear in the “claims” — the section specifying the legal boundaries of the applicant’s rights — but rather in the section of the patent application describing the nature and operation of the applicant’s work.
In an amicus brief filed by Charles Duan of the R Street Institute, and Daniel K. Nazer and Alex Moss of EFF, the authors encourage the Supreme Court to grant a writ of certiorari and overturn the Federal Circuit’s decision. Not only does this decision undermine the purpose of the patent system, but the exception it carves out goes against both current law and legal precedent. As they explain:
The plain meaning of 35 U.S.C. § 102(e)2 renders any description in a published application or granted patent effective as prior art as of the date of the earliest application from which it claims priority. Furthermore, Congress’s intent as reflected in the legislative history of the 1952 Patent Act as well as the 1999 amendments to the Act make apparent that Congress was codifying this Court’s case law, not altering it …
Under the 1952 Act, an applicant may receive no patent on an invention “described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent” — that is, a prior-filed application that matures to a granted patent …
Similarly, when in 1999 Congress provided for the default publication of patent applications within 18 months of filing, Congress amended § 102(e) to make clear that such publications would qualify as prior art under [Alexander Milburn Co. v. Davis-Bournonville Co.] just as granted patents had.
In addition to undermining the purpose of the patent system, upholding the Federal Circuit’s decision would also inject a great deal of regulatory uncertainty into the system, because it “will discourage applicants from drafting, and examiners from requiring, clear and narrow patent claims that should be encouraged because of the greater public notice they provide. Following Ariosa, applicants may feel they have little choice but to file broad claims to ensure that nobody else can get a patent on what they disclosed to the public in their application.”