The Scope of Prior Art in Patent Cases to Expand

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March 4, 2013

The Leahy-Smith American Invents Act (AIA) will be expanding the scope of prior art that may be considered by the Patent Office as part of the examination of a patent application on March 16, 2013. This change will result in significant changes to the consideration of prior art prior to filing a patent application and, in some cases, will make it much easier for an inventor to inadvertently forfeit the inventor s ability to obtain a patent on their invention.
 
Under the changes to 35 U.S.C. 102 made by the AIA, a person will be entitled to a patent unless the claimed invention was:

patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
described in a patent or in a published patent application, in which the patent or application, as the case may be, names another inventor and has an effective filing date that is prior to the effective filing date of the claimed invention.

 
These changes expand the prior art that may be considered by the Patent Office to include items in public use, on sale, or otherwise available to the public anywhere in the world (rather than just in the United States, as previously was the case) and extends the prior art effect of issued U.S. patents and published U.S. patent applications to their foreign priority date.
 
The AIA also adds an exception for certain disclosures, such that a disclosure made one year or less before the effective filing date of a claimed invention will not be considered prior art under 35 U.S.C. 102(a)(1) if the disclosure (a) was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (b) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. This exception creates a one year grace period for certain disclosures, similar to the one year period that was previously part of certain subsections of 35 U.S.C. 102.
 
However, it is important to note that under current case law the public use or sale of an invention is not considered a “disclosure” (instead they are termed either a “public use” or “sale”). Unless the courts change direction and hold that the public use or sale of an invention is now a “disclosure” under the provisions amended by the AIA, the one year exception added by the AIA does not appear to apply to any public use or sale of an invention.
 
Therefore, it appears that for patent applications filed on or after March 16, 2013, if an invention is in public use or is on sale at any time prior to a patent application being filed on the invention, such public use or offer for sale is likely to be considered prior art by the Patent Office and would prevent the inventor from obtaining a patent on their invention.
 
This represents a significant change from the current patent provisions, under which an inventor cannot obtain a patent on an invention that is in public use or on sale more than one year prior to the filing date of the patent application. In the past, this one year grace period has allowed inventors to begin commercialization of an invention to obtain the funds necessary to file a patent application. Due to the changes to the patent law by the AIA, this will no longer be an option, as it appears that any such public use or offer for sale would immediately disqualify an inventor from obtaining a patent on the invention if a patent application has not already been filed. Due to this change in the patent law, it is advisable that inventors take great care before allowing the public use of their invention or offering their invention for sale to any third party, as by doing so the inventor may forfeit any possibility of obtaining a patent on their invention. Where an inventor desires to preserve their ability to potentially obtain a patent, the inventor must file a patent application, whether an informal provisional patent application or the full non-provisional patent application, prior to any public use of their invention and prior to any offer of their invention for sale to any third party. In particular, the less formal and less expensive provisional patent application will likely become a much more important tool for inventors where the inventor has not yet decided whether to pursue a patent application but wants to allow the public use or sale of their invention. If you have questions regarding the above, please contact Derek Prestin, the author of this article, or any of the attorneys in the Business Transactions Practice Group of Ruder Ware.

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