Academic journal article Missouri Law Review

"Secret" Prior Art: Does Prior Art in a Provisional Patent Application Bar Future Patents?

Academic journal article Missouri Law Review

"Secret" Prior Art: Does Prior Art in a Provisional Patent Application Bar Future Patents?

Article excerpt

In re Giacomini, 612 F.3d 1380 (Fed. Cir. 2010).


The recent case of In re Giacomini presented the United States Court of Appeals for the Federal Circuit with the issue of whether a provisional patent application could contain prior art that would bar a subsequent patent from registration. In this matter of first impression, the Federal Circuit interpreted the plain language of 35 U.S.C. sections 102(e) and 119 as permitting a provisional patent application to shift a patent application's priority date, thereby enabling prior art to be found in an otherwise unpublished provisional patent application. (1) With this ruling, the Federal Circuit increased the scope of "secret" prior art that is unavailable to an inventor until well after his patent filing.

Giacomini could prove problematic because provisional patent applications are not published to the public, (2) and thus an inventor--even one who researches diligently--may be unable to discover this "secret" prior art. Erroneously believing that nothing will prevent the granting of a patent, this inventor will continue to invest time and resources into developing his invention only to have his patent application denied due to the later revelation of the previously undiscovered provisional patent application. Though the Federal Circuit barely touches on this issue of "secret" prior art, its ruling will have this very consequence. Thus, it appears that the court has expanded section 102(e) further than it intended.

This Note will examine whether prior art found in a provisional patent application can (and should) act as prior art to defeat a subsequent application by a second inventor. In looking at this issue, this Note will ask if Giacomini can be reconciled with the principles and policies that underlie patent law. To do so, this Note will first review the facts and holding of Giacomini. (3) Then this Note will survey the patent statutes, giving particular attention to those statutes that deal with priority and prior art. (4) Next, this Note will examine the reasoning of the Giacomini court. (5) Finally, this Note will look at that reasoning in light of 35 U.S.C. sections 102(e) and 119 and the policy concerns behind these statutes, concluding that Giacomini expands section 102(e) beyond its intended purpose. (6)


Four men--Peter Joseph Giacomini, Walter Michael Pitio, Hector Francisco Rodriguez, and Donald David Shugard (hereinafter referred to as "Giacomini Group")--invented a new selective storing cache system that "efficiently populat[es] a cache with resources." (7) Shortly after conception and reduction to practice, the Giacomini Group sought protection on its invention by filing a nonprovisional patent application on November 29, 2000, with the United States Patent and Trademark Office. (8) As its first claim, the Giacomini Group's patent application listed the following: "A method comprising: populating a cache with a resource only when at least i requests for said resource have been received; wherein i is an integer and is at least occasionally greater than one." (9) Simply put, this invention relates to a means of selectively storing data gathered on the Internet. (10)

The method of "selectively storing data" can best be explained in terms of the World Wide Web. (11) When one requests a website over the Internet, the request travels from "the user's computer to the Web server that has the page." (12) As the requests for this page filter in, the server has to fulfill all of these thousands of requests, which often leads to congestion. (13) In order to help with this congestion problem, Web servers use "auxiliary Web servers" (also known as a "cache") that help direct some of this traffic. (14) Since a cache is made up of physical memory, it has a finite amount of space. (15) Because of this, a cache is most helpful when it is designed to efficiently decide "which resources are stored in the cache and when. …

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