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No Sugar-Coating: Post-AIA Patent on Secret Process Barred by Pre-Filing Sale of Product

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by Dennis Crouch

Although the result could have been guessed, the Federal Circuit has issued an important decision interpreting the scope of post-AIA 35 U.S.C. 102 -- and the meaning of the "claimed invention." Celanese Intl. Corp. v. Intl. Trade Comm'n,  22-01827 (Fed. Cir. August 12, 2024).   In particular, the court affirmed the precedent of D.L. Auld -- i.e., the on-sale bar continues to block patenting of an otherwise secret process when the patentee makes pre-filing sales of product made using that process. The ITC had invalidated Celanese' artificial sweetener manufacturing process patent based upon these pre-filing sales. That judgment was thus affirmed on appeal.

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Celanese v. ITC: Can a Secret Manufacturing Process Be Patented After Sale of the Resulting Product?

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by Dennis Crouch

The Federal Circuit held oral arguments on March 4, 2024 in the important patent case of Celanese Int'l. v ITC, 22-1827 (Fed. Cir. 2024).

The question: Under the AIA, does sale of a product by the patent applicant prohibit the patentee from later patenting the process used to make the product? 

Background

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Text vs Precedent: Celanese and the Secret Process On-Sale Bar

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by Dennis Crouch

In a pending petition for certiorari, the Maltese company Celanese Int'l is poised to ask the Supreme Court to resolve an important question about the scope of the AIA's on-sale bar: whether sales of products made using a secret process can bar later patent protection for that process. The issue arises from a Federal Circuit decision upholding the ITC's invalidation of Celanese's patents covering methods for manufacturing the artificial sweetener Ace-K. Celanese Int'l Corp. v. Int'l Trade Comm'n, 67 F.4th 1361 (Fed. Cir. 2024).  The court recently granted Celanese with an extension of time to file its formal petition for writ of certiorari, due December 10, 2024.  As is typical, the petitioner used its request for extension as a first opportunity to highlight the importance of the case and preview its primary arguments.

I have been following this case for some time:

  1. Dennis Crouch, Policy Considerations: The On-Sale Bar for Secret Processes, Patently-O (Aug. 15, 2024).
  2. Dennis Crouch, No Sugar-Coating: Post-AIA Patent on Secret Process Barred by Pre-Filing Sale of Product, Patently-O (Aug. 12, 2024).
  3. Dennis Crouch, Celanese v. ITC: The Overlooked 271(g) Wrinkle and Competing Policy Concerns, Patently-O (Mar. 7, 2024).
  4. Dennis Crouch, Celanese v. ITC: Can a Secret Manufacturing Process Be Patented After Sale of the Resulting Product?, Patently-O (Mar. 4, 2024).

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Federal Circuit Narrows AIA Grace Period: Public Disclosure Must Make Invention ‘Reasonably Available’

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by Dennis Crouch

The Federal Circuit's new decision in Sanho v. Kaijet highlights the narrowness of the pre-filing grace period (safe harbor) provision under the America Invents Act (AIA) and serves as a reminder that there are a number of patents that would have been valid under the pre-AIA patent system may no longer be valid under the current law. Sanho Corp. v. Kaijet Technology International Limited, Inc., No. 2023-1336 (Fed. Cir. July 31, 2024).

The basic holding is that the 102(a)(2)/(b)(2) safe harbor triggered by an inventor's pre-filing "public disclosure" of the invention requires that the invention be made "reasonably available to the public." Neither public uses nor private sales satisfy this requirement. This is a long post, because the issues are both important and interesting. In the end, I suggest a panel rehearing in the case because I believe that the Federal Circuit unfairly found forfeiture of key arguments whose resolution would help clarify the law.

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