As of October 31, 2013, the Project on Commercializing Innovation is no longer active.
The Project is succeeded by the Hoover IP² Working Group on Intellectual Property, Innovation, and Prosperity. Hoover IP²

Chapter Four – Novelty and Loss of Right

Chapter four introduces the concepts of anticipation by prior art and loss of right, which are both defined in 35 U.S.C. § 102.  Although § 102 may seem complex at first glance, each of its sub-sections may be considered separately when analyzing a problem.  By carefully stepping through the who, what, when, and where of § 102, any problem can be made manageable.  Understanding the prior art identified by the § 102 analysis is vital even if no anticipation or loss of right is found.  As you will see in chapter five, much of the same prior art is used to conduct the obviousness analysis of § 103.

 

Note the Reexamination Certificate at the end of the Paulsen ‘456 patent and the Notice of Adverse Decisions in Interference at the end of the Dynamic Sciences Limited ‘662 patent, which show the final outcomes of their respective cases.

 

Students studying prior art issues may be interested in this set of prior art problems and answers prepared by Professors Paul M. Janicke and Lisa A. Dolak.  The questions and answers focus on prior art issues under the America Invents Act and may be useful as a study aid.

 

Updates

 

  1. The America Invents Act substantially changes § 102.  Effective March 16, 2013 (“upon the expiration of the 18-month period beginning on the date of the enactment of this Act”), the United States will become essentially a “first-inventor-to-file” system, in contrast to the current “first-to-invent” system and the “first-to-file” system used in much of the rest of the world.  A key change is that an applicant may no longer use an earlier date of invention in order to overcome another inventor’s earlier filing date.  The AIA also does not bar novelty by abandonment, suppression, or concealment.  Amended § 102(a) now states that a person shall be entitled to a patent unless:

(1) 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

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

(emphasis added)

 

This change expands the available prior art in at least three key ways.  First, it largely eliminates the one-year grace period during which an inventor could file for a patent after disclosure.  Second, the disclosure can occur anywhere in the world, not only in this country.  Third, “effectively filed” includes foreign filing dates, which reverses the ruling of In re Hilmer.

 

Note that the changes to § 102 will only affect applications and patents filed on or after its effective date or that contain a specific reference to such an application or patent under §§ 120, 121 or 365(c).  Applications and patents with earlier filing dates will be judged under the old novelty rules, with the exception of patents reviewed under the special transitional program for business method patents.  The retroactivity of the business method patent review program may be unconstitutional, however.

 

  1. The one-year grace period is not completely eliminated, however.  Amended § 102(b) contains exceptions for disclosures made by the inventor or any joint inventor and for commonly-owned patents and applications:

(1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

(A) the disclosure 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.

(2) A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—

(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), 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; or

(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

Whether “disclosures” under amended § 102(b) includes offers, sales, or public uses remains an open question.

 

  1. Under the AIA it is unclear whether § 102(a)(1) maintains the bar against patenting inventions that have been commercially exploited in secret.  SeeMetallizing Eng’g Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516 (2d Cir. 1946); Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374 (Fed. Cir. 2005) (holding that secret commercial use triggers the one year grace period under then-current § 102(b)).  Amended § 102(a)(1) requires, in pertinent part, either “public use,” which must of course be public, or a sale, which the rest of the statute suggests must also be “available to the public.”  Under this construction, uses and sales (i.e. commercial exploitation) that are secret would not bar patentability.  Legislative history (albeit from after the AIA was passed) supports this view, and the USPTO has cited that legislative history in support of its own position that “the inclusion of [the ‘otherwise available to the public’] clause in AIA 35 U.S.C. 102(a)(1) should be viewed as indicating that AIA 35 U.S.C. 102(a)(1) does not cover non-public uses or nonpublic offers for sale.”

 

An alternative view is that amended § 273 (prior user defense) is consistent with the interpretation that § 102(a)(1) did not overturn the traditional bar against patenting secretly commercially exploited inventions.  See Kevin E. Noonan, Interpreting 35 U.S.C. § 102 under the America Invents Act, Patent Docs (Jan. 31, 2012), http://www.patentdocs.org/2012/01/interpreting-35-usc-102-under-the-america-invents-act.html.

 

  1. Many existing patents and applications will continue to have their validity judged under pre-AIA law.  An important question is whether secret third-party sales trigger the § 102(b) statutory bar.  At least one case has held that they do not.  MDS Associates, Ltd. Partnership v. United States, 37 Fed. Cl. 611 (1997), aff’d without opin., 135 F.3d 778 (Fed. Cir. 1998).  The court in MDS held that “As a general rule, the on-sale bar applies to sales made by third parties, as well as to sales made by the inventor” but “the on-sale bar does not apply to third-party sales that, while disclosing the invention to the purchaser, do not make the invention accessible to the public.”  MDS, 37 Fed. Cl. at 632.

 

  1. In In re Carlson, the court’s summary of §102(d) on page 411 is inconsistent with the statutory language, but the error does not affect the result in the case.

 

  1. Enablement and the burden of proof.  During examination, both patents and printed publications cited as anticipating the claimed invention may be presumed to be enabling.  In re Antor Media Corp., ___ F.3d ___ (Fed. Cir. 2012).  The applicant may rebut that presumption with evidence of nonenablement.  The rationale for this holding is that the Patent Office is not equipped to test prior art for enablement, whereas “it is procedurally convenient to place the burden on an applicant who is in a better position to show, by experiment or argument, why the disclosure in question is not enabling or operative.”  Id., slip op. at 8.  Although Antor Media did not squarely address the issue, the presumption of enablement also appears to hold in litigation.

 

  1. Disclosure under old § 102(g)(2).  Under the 1952 Act as amended by the AIPA, § 102(g)(2) provides that “a person shall be entitled to a patent unless … before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. …”  The Federal Circuit had previously held that “made in this country by another inventor” could be satisfied by disclosure of the invention in the United States.  Scott v. Koyama, 281 F.3d 1243, 1247 (Fed. Cir. 2001).  InAmkor Tech., Inc. v. Int’l Trade Comm’n, ___ F.3d ___ (Fed. Cir. 2012), the court clarified that oral as well as written disclosures are sufficient to satisfy § 102(g)(2).  If oral testimony is relied upon, however, it must be independently corroborated.  Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1350-51 (Fed. Cir. 2001); also seeFinnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354 (Fed. Cir. 1999).  Although the AIA repealed § 102(g), that portion of the law only affects patents and applications whose filing date is after March 15, 2013.  Thus, hundreds of thousands of patents will continue to be judged under the older law.

 

  1. Prior art and the internet.  In Voter Verified, Inc. v. Premier Election Solutions, Inc., No. 11-1553 (Fed. Cir. Nov. 5, 2012), the Federal Circuit considered the issue of when a web-based reference may be considered a printed publication under pre-AIA 35 U.S.C. § 102(b).  In the case it was disputed whether the web-based reference at issue had been indexed by search engines prior to the critical date.  The court rejected the argument that a web-based reference must be indexed in order to be publicly accessible.

To be sure, indexing is a relevant factor in determining accessibility of potential prior art, particularly library-based references  But indexing is not a necessary condition for a reference to be publicly accessible; it is but one among many factors that may bear on public accessibility. Moreover, indexing is no more or less important in evaluating the  public accessibility of online references than for those fixed in more traditional, tangible media. In both situations, the ultimate question is whether the reference was available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.

Voter Verified at 8-9 (citations and quotations omitted).  The court held that the prior art reference was indeed available to the public:

The Risks Digest website [where the reference was posted] was undisputedly open to any internet user by the critical date.  Whether or not the website itself had been indexed by 1999 (through search engines or otherwise), the uncontested evidence indicates that a person of ordinary skill interested in electronic voting would have been independently aware of the Risks Digest as a prominent forum for discussing such technologies.  And upon accessing the Risks Digest website, such an interested researcher would have found the Benson article using that website’s own search functions and applying reasonable diligence.

Voter Verified at 10.

 

Errata

 

Current errata sheet for chapter 4.

 

 

Additional Source Material