Wednesday, June 04, 2008

Presumptions about provisionals

For a wandering discussion on provisional patent applications, see answers to the question:

When an issued utility patent claims priority to a provisional patent application, is there a presumption that the claimed invention is supported by the provisional?

For a dumber question, what happens when a provisional application is cited by number in a later provisional application, and is incorporated by reference, but NO nonprovisional application ever claims priority to the provisional application?

In a discussion of HP's loss to Cornell University, Patently-O wrote:

In a pre-trial decision, Judge Rader denied Cornell’s motion in limine and allowed HP to show the jury an unpublished masters degree thesis as 102(b) prior art. The court found the thesis publicly accessible because the thesis had been cited in a later article that was in the same area of technology as the issued patent (analogous art.).

“After weighing all the circumstances of accessibility, this court views as vitally important the citation of this scholarly work in the Tjaden-Flynn article.”

[The undergrad thesis at Princeton of the wife of Barack Obama has been much cited, but is currently not publicly available. Does citation alone make something prior art? Harold Wegner's "Enron-esque" paper has been cited (by Quillen and Webster) but it does not seem to be publicly available.]


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