A Publication of the New York Intellectual Property Law Association April/May 2017 The Report In This Issue Secret Prior Art – Time for Another Look Secret Prior Art –Time for By Andrew Berks* Another Look ......................1,4-7 ecret prior art” refers to a pat- files the application, even if the other President’s Corner ......................2-3 “Sent application that is effective person’s work was totally unknown to as a prior art reference as of its filing the inventor, then the subject invention In Memoriam date, even though it does not become fails the novelty test and should not be MARY RICHARDSON .............. 3 known to the public until its publi- entitled to a patent. cation date.1 These types of prior art But as a form of public disclosure, A Statistical Look at PTAB references, falling within the scope there is a special class of patent Post-Grant Proceedings .........8-11 of 35 U.S.C. § 102(a)(2) (or pre-AIA applications that may qualify as prior § 102(e)), have long been surrounded art: those that were filed before but PTAB Developments by controversy in obviousness-type published after the subject patent Involving CRISPR- invalidity arguments.2 This paper ex- application was filed. These so-called Cas9 Gene Editing amines the nature and history of this “secret prior art” patent applications Technology .........................12-15 problem and proposes a solution. are an artifact of the inherent delays in patent office procedures. For 95thAnnual Dinner in I. Conditions for Patentability example, in the United States, prior Honor of the Federal It is axiomatic under modern to 2000, patent applications were Judiciary .............................16-17 patent law systems that a patent claim kept secret until they issued. Under must be novel3 and not obvious4 to current practice, in essentially all Historian’s Corner .......................18 satisfy conditions of patentability. patent jurisdictions (including the This is a universal patent policy, part U.S.), patent applications are typically Calendar .....................................19 of the quid pro quo of the inventor’s published 18 months after their priority disclosure of an invention in return date. So the problem is that if patent Moving Up & Moving On ............19 for the right to exclude infringers from application A is a relevant reference (for practicing the invention for a limited anticipation or obviousness) to patent Notable Trademark period of time.5 Decisions ...........................20-23 application B, but application A was A. Novelty filed prior to the filing of application A Call for Nominations ...............23 The novelty analysis for a patent B, the inventor of application B has no should be straightforward and abso- way of knowing about the disclosure CLE Programs ..............................24 lute. To qualify for a patent, the in- in application A until it publishes. ventor must be the first person to con- Thus, application A is unknown to the Board Minutes ........................26-27 ceive of the invention, as evidenced applicant of application B and therefore by the filing of a patent application. “secret” until application A publishes. New Members .............................28 If it can be shown that another per- With respect to anticipation, such son fully described the invention in a secret prior art, even though it is made public disclosure before the inventor public only after the filing date of the The views expressed in The Report are the views of the authors except where Board of Directors approval is g expressly indicated. © Copyright 2017 The New York Intellectual Property Law Association, Inc. cont. on page 4 N Y I P L A Page 1 www.NYIPLN Y I P L A April/May A.org 2017 April/May 2017 former USPTO Director, and Dorothy Auth and brought together United States District Judges efore starting my term as President, I heard Katherine Forrest (S.D.N.Y.) and John C. Lifland Bfrom several past Presidents that the year (Ret.) (D. New Jersey), Congressman Hakeem goes by fast. They were right. The Annual Jeffries, and leaders of major IP bar associations: Meeting is just weeks away. The proxies for IPO, AIPLA, ABA IP Law Section, Boston election of the slate of 2017-18 Officers and PLA and BIO. Invited NYIPLA members were Directors have been sent out, and so I am the afforded the opportunity to actively participate NYIPLA version of a lame duck. But I do get to in a detailed and lively discussion of the outlines write this last column. of potential legislation to amend Section 101. In my prior column, I wrote about the The Forum was organized by a project team upcoming Judges Dinner and the fact that of Dorothy Auth, Annemarie Hassett, Jeffrey the NYIPLA was taking its traditions to Butler, Charles Macedo, Robert Isackson, the Midtown Hilton. Well, from all reports, William McCabe, and me. The Legislative Action the Dinner was a great success. Over 2500 Committee is following up with a study toward guests attended—down a bit from last year a recommendation for an NYIPLA position on but excellent considering the break from the potential legislation. Waldorf. The two speakers hit home runs. Other Committees have had a busy second half. Judge Denny Chin was characteristically Perhaps as a send-off to winter, the Young Lawyers humorous, gracious, and inspiring in accepting Committee, the Women in IP Law Committee, the Outstanding Public Service Award. Walter and the Copyright Law & Practice Committee all Isaacson wove together fascinating stories hosted or co-hosted happy hours in February and of the collaboration that spawned some of March. Also in February, the Women in IP Law the seminal inventions of the digital age. Committee and the Trade Secrets Committee Our Executive Office under Feikje van Rein presented a topical program on cybersecurity titled, executed the Dinner preparations and on-site “Protecting Valuable and Sensitive Information management flawlessly. in the Corporate Setting.” In March, the YLC The Day of Dinner CLE program also was continued its roundtable program series with one a great success. A panel of three United States titled, “Speaking the Language of Your Clients: The District Judges—Hon. Richard G. Andrews Advertising Industry.” (D. Delaware), Hon. Ron Clark (Chief Judge, And speaking of the YLC, the NYIPLA has E.D. Texas), and Hon. Dennis Saylor IV launched a Mentoring Program for its young (D. Massachusetts)—led by moderator and lawyer members (eight years or fewer out of Immediate Past President Dorothy Auth, law school). Eligible members who enroll in the drilled down on the issue of intent in patent program are being matched with experienced infringement cases in the wake NYIPLA members who can of the decisions by the United be a source of information, States Supreme Court on advice, and guidance on career indirect infringement, attorney PRESIDENT’S CORNER development and growth, and fees, and enhanced damages. who can assist young members Much else has happened who wish to become more in this second half of the active in the NYIPLA. A social Association year. Most event is being planned in June notably, on March 6th, the to kick off the Program. NYIPLA held a Presidents We close out the year Forum at the Thurgood of course with the Annual Marshall Courthouse on a topic Meeting on May 16th. After that promises to command the participating in the Presidents Association’s attention for the Forum in March, Judge foreseeable future: “Section Katherine Forrest will return to 101 Is Broken: Is There a deliver the keynote address at Legislative Fix?” The Forum the Awards Dinner. We have a was led by David Kappos, most deserving Inventor of the N Y I P L A Page 2 www.NYIPL A.org Year, Dr. Adrian Krainer, thanks to the fine work of the many people who have made this year so enjoyable and IOTY Committee and Board liaison Charles Macedo productive: incoming President Annemarie Hassett, in significantly increasing the number of submissions Past President Dorothy Auth, fellow Officers Matthew from which to choose this year. We also have excellent MacFarlane and Peter Thurlow, all of my fellow Board 1st and 2nd place winners of the Hon. William Conner Members, and all of the Committee Chairs. (I wish I Writing Competition (selected, but yet to be announced could list all the names but the Publications Committee as of this writing) thanks to the work of the CWC gives me a word limit). Finally, I want to especially Committee. And finally, the NYIPLA will recognize thank Feikje van Rein, Lisa Lu, Olivia Yoon, and the at the Awards Dinner the recipient of the Hon. Giles rest of the Executive Office team, without whom this S. Rich Diversity Scholarship selected by St. John’s job would be impossible. University School of Law. I want to sincerely thank the members of the Walt Hanley NYIPLA for giving me the opportunity to serve, and the IN MEMORIAM MARY RICHARDSON 1944 – 2017 By William H. Dippert It is with great sadness was an Associate Editor that the NYIPLA and the of the Southern Illinois Publications Committee University Law Journal her share the news that Mary second year of law school Richardson passed away and then an Articles Editor in April 2017 at the age her senior year. of 72. Mary served the Mary’s legal career Association as a member included an earlier stint of several committees, with Shea & Gould and then most notably as a 13 years with the intellec- dedicated member of the tual property litigation de- Publications Committee partment at Kramer Levin since 2010 and especially as a co-chair Naftalis & Frankel LLP, from which she for the past five years. retired in 2012. Mary received a B.A.