The decision of the Board, summarily affirmed by a panel of this Court, held that a second-comer may patent an invention that another previously disclosed in a provisional application duly filed and statutorily rendered open to the public. This decision is contrary to both statutory construction and public policy, and en banc rehearing should be granted to reverse it.

Statutory construction does not support the Board’s reasoning. The Patent Act and case law interpreting it distinguish inventions from claimed inventions, construing the former concept much more broadly than the latter. The erroneous rule applied in this case arises from a conflation of those terms and concepts.

That error cuts against the core policy behind the patent grant. Patents are granted to encourage disclosure of new inventions. Granting a patent on an invention already disclosed to the public works the opposite effect, closing off knowledge that was previously free to use. Furthermore, the applied rule would render the criteria for patentability unstable over time, detracting from a predictable patent system.

The Court should take this case en banc, hold that inventions previously disclosed in publicly-available provisional applications are prior art, even if not claimed, and overrule precedents to the contrary.

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