Prior Art and their Exceptions Under the AIA

In 2011, Congress enacted the Leahy-Smith America Invents Act (AIA), which transformed determining patent priority in the U.S. system from a "first-to-invent" to a "first-inventor-to-file" system. The AIA amended Section 102 of the Patent Act to support this transition and redefine what constitutes prior art against an issued patent and a patent application.

Prior Art

Section 102 of the Patent Act defines the different forms of prior art that may cited against a claimed invention.

Under the AIA, Section 102(a)(1) defines prior art to include situations in which the claimed invention was "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."

Section 102(a)(2) further defines prior art to include situations in which 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." Accordingly, prior art includes other patent applications with an effective filing date and other patents with an issue date before the effective date of the invention.

As a result of our transition to a "first-inventor-to-file-system" under the AIA, a reference qualifies as prior art based on the "effective filing date" of the claimed invention rather than the date of the invention. The AIA defines the "effective filing date" for a claimed invention in a patent or application for a patent (other than a reissue application or reissued patent) as the earliest of: (1) the actual filing date of the patent or the application for the patent containing the claimed invention; or (2) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority or the benefit of an earlier filing date under 35 U.S.C. 119, 120, 121, 365, or 386. These earlier applications include related foreign, continuation, divisional, and international application types.

Exceptions

 Section 102 provides exceptions for certain references that would otherwise be prior art as defined under Sections 102(a)(1) and 102(a)(2). Exceptions for prior art defined in Section 102(a)(1) are provided in Section 102(b)(1). Exceptions for prior art defined in Section 102(a)(2) are provided in Section 102(b)(2).

Referencing prior art defined under Section 102(a)(1), Section 102(b)(1) provides that "a disclosure made 1 year or less before the effective filing date of the claimed invention shall not be prior art to the claimed invention" 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 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."

As a reminder, the prior art defined in Section 102(a)(1) includes "described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective date of the claimed invention." Notably, the exceptions under Section 102(b)(1), which apply to the prior art defined under Section 102(a)(1), provide protection only during the one-year grace period.

Accordingly, Section 102(b)(1)(A) provides a prior art exception for a "disclosure" that was either "made by the inventor … or by another who obtained the subject matter disclosed directly or indirectly from the inventor" during the one-year grace period. For example, a private or public sale, printed publication, or public use by the inventor during the one-year grace period is not prior art.

Section 102(b)(1)(B) provides a prior art exception for disclosures by another (not by the inventor or by another who obtained it from the inventor) after the "subject matter disclosed" was "publicly disclosed by the inventor" during the one-year grace period. For example, a private or public sale, printed publication, or public use by a third party of the subject matter after the inventor has publicly disclosed the subject matter during the one-year grace period is not prior art.

As another reminder, the prior art defined in Section 102(b) includes situations where the invention has been "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." Notably, the exceptions under Section 102(b)(2), which apply to the prior art defined under Section 102(a)(2), are not limited to the one-year grace period.

Accordingly, Section 102(b)(2)(A) provides a prior art exception for "subject matter disclosed" that "was obtained directly or indirectly from the inventor" without any time limits. For example, a patent application by another that discloses subject matter obtained from the inventor is not prior art to the inventor without regard to the one-year time limit.

Section 102(b)(2)(B) provides a prior art exception for patent applications by another that discloses the "subject matter [already] disclosed" by the inventor without regard to the one-year time limit.

Public disclosure

The term "public disclosure," as used in Section 102(b), requires that the invention be made available to the public. Determining whether an invention has been made available to the public is akin to determining whether a document is publicly accessible. For example, a Federal Court has held that a reference was not prior art despite "distribution to a limited number of entities without a legal obligation of confidentiality" because it was not sufficiently publicly accessible. In a recent Federal Circuit case, the Court held that a private sale of a product to another party did not "publicly disclose" the relevant subject matter under Section 102(b)(2)(B) because the sale did not make the subject matter of the prior art "reasonably available to the public."

Together, the exceptions defined in Sections 102 (b)(1)(B) and 102(b)(2)(B) except prior art disclosures that were made after the invention was "publicly disclosed" by the inventor. However, the grace period only applies if the patent applicant sufficiently publicly discloses the invention before the other party's prior art came into existence.

In contrast, the exceptions defined in Sections 102(b)(1)(A) and 102(b)(2)(A) operate in the context of the "first-inventor-to-file" regime to provide protection for otherwise invalidating disclosures by the inventor or patentee or by someone who obtained the subject matter of the invention from the inventor or patentee without regard to a "publicly disclosed" requirement.

On Sale Bar

The on sale bar under Section 102(a)(1) provides that an invention cannot be patented if it has been for sale for more than one year prior to the patent filing. The on sale bar is meant to prevent inventors from commercially exploiting their inventions before filing a patent application.

Under the AIA, the Supreme Court has clarified that an inventor's sale of an invention to a third party obliged to keep the invention confidential can be invalidating under Section 102(a). A sale or offer of sale need not make an invention available to the public to constitute an invalidating sale or offer to sell. Accordingly, after the AIA, if the existence of the sale is public, the details of the invention need not be publicly disclosed in terms of the sale for the sale to be invalidated under Section 102.

One of the AIA's goals was to bring the U.S. patent system more in line with the rest of the world. However, the application of the on sale bar to secret processes in the U.S. appears to diverge from the approach taken in many other jurisdictions. For example, under European law, selling a product made by a secret process does not generally bar a later patent on the process, provided the process cannot be deduced from the product itself.

How TCP Law Can Help

A TCP Law patent attorney can help you evaluate possible prior art references and their application to your invention.

For assistance with assessing prior art references given your invention or with any patent issue, please contact TCP Law at info@tcplawfirm.com or 917-612-1059.