Morgan: Ambiguities in Defining Prior Art under the Leahy-Smith America Invents Act

In our newest Patently-O Patent Law Journal article, former Xerox patent counsel Paul Morgan highlights two important ambiguities in the new 35 U.S.C. § 102(a)(1) as defined by the Leahy-Smith America Invents Act. This provision replaces Sections 102(a) and 102(b) and, beginning in March 2013 will serve as the fundamental definition of prior art in the US patent system. Under the new statute, no patent can issue if "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." The language "otherwise available to the public" is new to the patent statute. Morgan makes the counterintuitive case that the catchall phrase actually serve the purpose of limiting limit the scope of prior art under the statute. In particular, the language suggests that the other types of art identified in the statute are also "available to the public." If so, this statutory change could be seen to overrule doctrines that bar patent rights based upon secret commercialization by the patentee. See, for example, Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F. 2d 516, 520 (2nd Cir. 1946).

Read the article: Paul Morgan, The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act, 2011 Patently-O Patent Law Review 29.  Download Morgan.2011.AIAAmbiguities

43 thoughts on “Morgan: Ambiguities in Defining Prior Art under the Leahy-Smith America Invents Act

  1. Anon, the whole point of Pennock v. Dialogue is that Congress does not have the discretion to authorize extended trade secret to use followed by the obtaining of a patent. If you have any doubts about what Pennock held take a look at the Kendall case that was cited by Ron. That's exactly what it cited Pennock for.

    Sent from iPhone

  2. Smell a Rat?
    When Berkenstock asked me about a single folded Fender, he showed it to me of course ( now I understand why) to gage what I would respond with. Obviously i said where did you get that? That was the same drawing I sent Tamai… WHO CLAIMED HE NEVER GOT IT… BUT THEN THERE WAS ALSO THE STORY THAT I AM SURE YOU CHECKED ABOUT THE POST MASTER WOMAN FROM IUKA WHO WAS WORKING THE ENVILLE P.O. YEP. SHE SAW ME PUT THE ZIP ON AS SHE READ IT TO ME OFF THOSE BIG THICK BOOKS THAT USED TO BE IN EVERY POST OFFICE. AND TO GIVE STRIKE 3 I RECOMMEND YOU REMEMBER THE SEARCH OF AUGUST 26, 1995 A SATURDAY! WITH ONLY THREE DRAWINGS FOR EACH… THEN I SUGGEST YOU REMEMBER WENZEL AND WHAT HE DID AND GOT PUNISHED FOR.
    The only person that gave a Damx then was Berkenstock. But that changed too.Now did they leave him in the dust, and Garvey left saying he thought you all sxxked? and then Krieger said enough already see you later? And what about Bruce who knew from the get go? Why did he even allow it to happen? And did Bovard leave, and then get Jim the job after he was stripped of the others? You have all heard this story a million times. But you still spun me around like a top … claiming that is how Peops with Stem Cell Damage behaved! So that was your plan.. to make me look really damaged. And you all knew just how many Police, screwed me out of my life! And then allowed GREEDY Congress and Family to follow suit! And you wonder why I have Zero Respect? You’re kidding right?
    Shame on you all.

  3. New:
    I fully agree with your analysis of PUR and generally agree with the thrust of your analysis regarding the substantial deference Congress is likely to receive under any Constitutional challenge, should the AIA be construed as repealing Metallizing Engineering. However, your point about the disclosure end of the patent bargain being met as long as “if it’s new to you, it’s still new,” trivializes the patent bargain’s purposes and misses the scope of what the founders thought was a fair consideration from the inventor in exchange for imposing on the public what they regarded as the necessary “evil of monopoly”. Contrary to your assertion, there is no “egregious, logical error” here because this debate is not about the right of a trade secret owner or about PUR – it is about the conditions that a patent policy should imposed on, and the price exacted from, patentees. There is no question that prompt disclosures result in better progression of the useful arts than delayed disclosures. The historical record shows that the founders did not think that mere disclosure at some point after lengthy secret commercial exploitation (“if it’s new to you, it’s still new”) is sufficient consideration for a monopoly grant. They wanted more from inventors – they wanted early disclosure because, as Madison wrote, “the discovery might be expected in a short time from other hands” without the grant of a monopoly.

    It is undeniable that there was always some progress of useful arts under the Guild system of artisans hoarding trade secrets and the grants of monopolies by the Crown “to court favorites in goods or businesses which had long before been enjoyed by the public.” However, it is our founders’ articulated policy principles and intent that must be considered by the Supreme Court if and when it is asked to interpret the meaning of the term “promote the progress.” Congress was presented with no evidence, nor made a finding that permitting would-be patentees to delay disclosure would promote the progress. Congress will no doubt enjoy substantial deference in the matter but I believe such would be attenuated in this case because there is no record of debate, hearings or any findings that support a statutory change that now demands much less from patentees (if the AIA is so interpreted). For that matter, there is no evidence that members of Congress even thought or knew that they are repealing Metallizing Engineering. That said, I sadly admit that given the record of the Supreme Court on deciding the Constitutionality of laws, it may well decide to let this provision of the AIA slide through.

  4. Ned,

    I will defer any discussion on “exclusive right” for another time – this topic is meaty enough on its own.

  5. For a moment, assume that I am correct.

    Would Congress need to say anything if it thought it was not overruling Pennock?

    What would you want to put into the congressional record regarding something you didn’t think you needed to make of record? Remember – Pennock is about the deference to Congress. Do you really think Congress is going to be polite, and say “Thank you and we are making this note, even though we don’t have to“?

    As for intent – it is more than clear that Congress intended the most vast overhaul of the patent system in more than 100 years. The record is more than clear on that point.

  6. anon, what’s your view on the “exclusive Right” clause. Does Congress have the power to grant less than an exclusive Right under this clause? If they do, would a inventor award of $500 be OK? What about a plaque on the wall and an handshake from the Commissioner? What about a gold star sticky that one could paste on one’s lapel?

    What does Congress have the power to do, and does it have any limits?

  7. anon, you may be right in the end. However, at least Hal Wegner and I disagree. If the legislative intent is not spelled out in terms that cannot be reconciled with retaining Pennock, then it is overruled. However, I do not believe the Congression record is clear on this point.

  8. Ned,

    As I have explained before, Pennock does not have to be deemed to be overruled. Pennock recognizes the deference given to Congress to make the rules.

    Congress has just made different rules.

    It is not as much a matter of overruling Pennock, as it is applying the case to the new set of rules that Pennock fully gives deference to.

  9. Ron, regarding the interpretation of “on sale” in the new statute, note that if it is interpreted to preserve Pennock, the result will affect foreign trade secret activity that had heretofore never been subject to the US on sale bar. In other words, the foreign trade secret user has always had the right to obtain a US patent regardless of the extent of his use in, for example, Germany, while the US user could not due to the on sale bar.

    I suspect that a great deal of the lobbying for an interpretation that the new “on sale” was limited only to public disclosures was a genuine effort to make out laws the same as European law on this topic. But, another view is this: The effort was made by foreign entities to preserve their right to obtain a patent at any time regardless of their prior trade secret use.

    Cynical, I agree, but I do smell a rat.

  10. New, I do not believe the courts will deem Pennock overruled. Thus, I do not believe the trade secret user can later, at any time, apply for and obtain a patent.

    (More on this point in a new post below.)

    I wonder if your calculus changes if it appears that the trade secret users has no incentive to ever publicly disclose and describe his secret process?

  11. I like the “objective” feel of evaluating whatever patent application is supplied at whatever time.

    I am not certain that the AIA can avoid a Guild-Support “taste,” because, quite frankly, the bill was run through by the Guilds (and very much at the expense of the non-Guilds).

    I think Ron has done an excellent job of trying to raise awareness of the issues present in this law, and while I think there are still plenty of issues, I do not think constitutional infirmaty is a strong one.

    Ned,

    I think you overstate the undermining of Progress because there is no law mandating disclosure now. Since applying for a patent is – and has always been – an optional undertaking, you cannot link an unmandated choice to the constitutionality of the AIA.

    That being said, I am not fully comfortable with PUR (of any kind). What I haven’t seen folded into this intricate issue is whether or not PUR constitutes a “taking.”

    That may still be a “constitutional issue,” if it can be shown (and this would be highly dependent on individual case facts), that the grant of the PUR removes all value of the patent property right. Certainly, the exhaustion of the patent right by the sale of the PUR holder to its customers – completely cutting out the patent holder – is problematic at best.

    I can envison a fact pattern wherein a small scale patent holder has developed a market excluding everyone and a large scale PUR can ride the free-rider PUR rights and devalue the patent propety (for example, selling items embodied by the patent at a price point that the patent holder cannot match). In such a duopoly, the PUR may hold all the cards and the patent is practically valueless for the patent holder.

  12. A few major flaws I see in Ron Katznelson’s paper:

    One is timing.

    The actual law agreed to by the Senate, voted on by the Senate, was after the “soliloquy.” It’s inclusion in the record, then, and any “timing” arguments are moot.

    Two is the assumption that the Supreme Court cannot be wrong, or rather, that their word must be final.

    Anyone looking at the history of the Court sees an ebb and flow. Decisions are “modified” over time, positions change 180 degrees – sometimes with direct overrulings, but more importantly, sometimes without direct overrulings.

    I think there is a reason why the government included in its required PUR Patent Office report a question regarding the involvement of Trade Secrets and Patent Law.

    Ron points to the “euro”-izing of US law, but I am not convinced that the arguments that tie the change to any type of unconstitutional mooring are compelling, even if they have been oft repeated in the past. Those arguments must be viewed against the Patent Law of that time, that that time’s Congress – in their discretionary right – had enacted. I think Pennock is clear that the Court laid deference to Congress to write the rules of the game, and the Court’s comments on constitutionality must be applied by the facts of that case AGAINST the rules – as decided by Congress – at that time. The Court in Pennock clearly indicates that Congress can change those rules.

    A New Light asks the right question: Can one really say that Progress has been impeded if the person holding the Trade Secret can file for a patent at any time in the future?

    I do think that the logic on patent time has been poorly conflated throughout the examples in Ron’s paper. You cannot mix Trade Secret time and Patent time and claim that both give an unlimited patent protection time precisely because Trade Secret time is outside of Patent time. Once you file for an application – any time you file for an application – and actually join the true patent game, the (PATENT) time is limited. Yes, total time may be unlimited, but since Trade Secrets are outside of Patent Law, they cannot be included in the calculus of Patent Law protection. This is a simple, but egregious, logical error.

    That being said, I do see the possibility that PUR violates this distinction in some regard. This violation is not in respect to “true” patent protection, but rather, in the free-rider protections that are provided by law. There is in effect a Pseudo-Patent that is granted to the entity that can prove PUR. Remember, PUR necessitates that the PUR holder had a patentable item a full year prior to the actual patent holder’s filing. A full year.

    It is hard to buy the argument put forth by the PUR crowd of “protecting investments” when the choice of protecting – either by paying for that protection by joining the patent race (which they clearly could have won), or by not paying (and publishing) if “money” were truly an issue are already (and always have been) available.

    The only remaining argument in the actual passage of the business method PUR was the “surprise” factor. But this factor does not apply to the expanded PUR position, because the business method PUR was only intended for a temporary period. Once the temporary period was over, and everyone had the chance to realize that business methods were fair patent game, the same “rules” of everyone choosing to join the game would apply and PUR would no longer be needed.

    In this sense, I do not see expanded PUR as a “natural evolutionary step.” Rather, like both Ned and Ron, this appears to be a rather substantive sea-change in the law.

    But unlike, Ned and Ron, I am not yet convinced that the root of the argument (unconstitutional) can still apply. This is a sea-change that Congress can make. And has made. This is because the other “euro”-factor of FTF has been made law. If we accept FTF, we necessarily accept the “euro”-factor that goes with it. And if Congress, whom the Court (as in Pennock clearly states) believes has the authority and the deference of making the rules, if Congress has knowingly accepted that the premise of a Trade Secret holder applying for a patent does not violate the constitutional mandate to provide patents to promote Progress, then the Court will not find these provisions unconstitutional.

    I am reminded of the phrase “It’s still new to you.”

    After all, if by the time the Trade Secret holder (WHENEVER that time happens) decides to apply for a patent, and the subject of that patent STILL is not within the public knowledge, that is, if the application can merit a patent, then the Progress prong is STILL being met. A New Light’s pointing out that this may not be “optimal” is on point. A critical point is that Patent Law does not require optimal. If it did, then Patent Law by extension would make Trade Secrets illegal.

    They are not.

    So the point is NOT that Progress has been stymied by the holding of Trade Secrets, but rather, the point is to make an objective assessment that at the time of application (WHENEVER that time occurs), does the merit of the application warrant a patent or not. If a Trade Secret holder has waited too long, the law itself will determine that by judging the merit of the application – just as it would judge ANY secondary independent inventor’s application. If the Trade Secret holder’s application still merits a patent, then the constitutional mandate of Progress is STILL met and there is no infirmity. Yes, there is less than optimality, but that is not a crime. By looking at the content and focusing only on the merits of the content, we can see that the timing aspect is (and perhaps always was) a red herring.

  13. But there is a fallacy in the argument,

    That’s not a bug in the AIA, that’s the feature.

  14. A New Light, the argument made (by those who advocated FTF) that we also needed prior user rights in a FTF system is that the developer of a new product or process or factory could no longer rely on prior invention to protect his investment against an independent inventor who files during the first inventor’s development stage.

    Now, there is “some” truth to this — at least to the extent that such prior invention would be prior art. That is typically supported by the first inventor himself filing a patent application on the invention. But it is also supported by the introduction of new products that may be entitled under 102(g) to an effective prior art date as of their dates of reduction to practice.

    But there is a fallacy in the argument, and it is this: Pure trade secret use of a process by a first inventor is not and has never been prior art to invalidate a third party patent. Thus even under the prior law, the trade secret user was vulnerable to the later inventor/patentee.

    Had the prior user statute required, as a condition of the benefit of a prior user right, the public disclosure in some manner, by product, publication or by filing a patent (albeit, not the first to file), then the prior user right would have preserved the status quo ante. The commercial developer who could have relied on his earlier invention dates to invalidate a first filed patent, would have remained in the same position in a first-to-file system.

    But using this argument, the advocates of prior user rights got a lot more than just maintaining the status quo ante. They achieved a remarkable sea-change in the law where trade secret use is for the very first time protected against a patent holder who has disclosed the invention to the public and who has done what the constitution requires of him to advance the Progress of the Useful Arts, and who has assured the public that, after a limited time, they too shall be entitled to use the invention freely. The new statute undermines, and greatly undermines, the fundamental purpose of the Patents Clause!

    In the past, to be certain, and a proper survey will prove this I believe, the great incentive to disclose trade secret processes in a patent was simply to protect against third parties from obtaining a patent and shutting the first inventor down, a proposition so risky that the risk could not be tolerated.

    In the future, however, the risk calculus will change dramatically. The incentive to disclose to protect one’s own investment will largely be gone. One can and should expect that the only trade secret process that will be disclosed in the future will be those that cannot be kept secret for very long in the first place.

    Anyone who pauses and considers this even for a short time will see that prior user rights fundamentally undermines Progress to the extent Progress is linked to public disclosure. If there is anything that is manifestly unconstitutional in the new Act, it is this.

  15. First, I want to thank Ron and Paul for adding some long needed substance to the blog comments.

    Thanks.

    Second, I want to plant a seed (a seed I picked up from that so-called wicked Gene Quinn blog on the constitutional infirmity (or not) of the current topic and a topic that must be added because it is correlated: Prior User Rights.

    I know there was a discussion (left unanswered) on Quinn’s blog about the constitutional impact that Prior User Rights brings to the table. It was commented that Prior User Rights are not in fact new – having been passed by Congress a number of years ago as a temporary measure in response to Business Method Patents. What was left unanswered was if even that earlier move passed a constitutional infirmity question. Well, it is temporary no more, and it is limited to that “surprise” field no more. With open eyes, our Congress has fully embraced the concept.

    I think it strangely tragic that, in fact, there has not been a single case of Prior User Rights for Business Methods that made its way through the courts. NOT ONE!

    I think it tragic, because had one made it through, we could have seen (and had answered prior to the grand explosion of Prior User Rights) the answer to the question of constitutional infirmity. At its essence, the passage of Prior User Rights has struck to the heart of the fine legal cites provided in substance by Ron.

    We are now seeing only the next natural evolutionary step that that measure more than a decade ago has wrought. When you start providing benefits to those who eschew the patent system, you have jumped full force on a very steep and very slippery slope. You cannot be surprised at where you end up.

    The purposeful inclusion of such rights for those who choose not to use the patent system simply raise the “worth” of Trade Secret practice to be on par with the “worth” of Patent practice. Having raised such worth, the distinctions made in all the previous case law fall to the wayside as no longer applicable.

    Also consider, a problem with such grand and glorious case law is that they rely on a premise that just might not be true.

    What if purveyors of Trade Secrets do not impede the progress of the useful arts?

    The statement was made and has long been taken as something that must be true. But we need to ask: Must it be true? And if not true, then the link with the constitutional mandate is broken and there is no constitutional infirmity.

    Think about it – we have long held that patents may be granted to secondary inventors – those inventors who may re-invent something that someone else has already invented but have kept secret. Congress has set this in place for many decades now. Logically, if holders of Trade Secrets did in fact impede Progress and the statement True, then both no patents for second inventors should issue AND Trade Secrets should not be allowed. When you mix the two, then you are bound to have to face the fact that Trade Secrets AND Patents co-exist without detriment to either. And if they co-exist, then it is indeed a fallacy to simply accept the pronouncement that Trade Secrets must impede the Progress of the Useful Arts. If they don’t impede, then it really doesn’t matter when the patent process is started – as long as it is started. It doesn’t matter if the holder of the Trade Secret is the one that applies for a patent, because he would still be THE FIRST to apply! The fact that no one else could figure out the Trade Secret is a poor substitute for saying that Progress was impeded. Such a statement IS the fallacy. The fact that others may finally arrive on the heels of the Trade Secret holder and spur his filing should have no impact, because that Trade Secret Holder would still be THE FIRST to apply. The real question being asked is “Is this optimal? and of course the answer is no – but the solution to that question would be to outlaw Trade Secrets altogether.

    If we allow Trade Secrets (and we do), then we must recognize that they should NOT be conflated with patents. The First to File system brings this distinction home in a very big way. And the First to File system was evaluated for being constitutionally firm and passed. Hand in hand with First to File is the expansion of Prior User Rights to all corners of the patent world. This expansion was demanded by the same people who pushed for First to File. Ron is correct in noting the European Law aspect in play and it is that aspect that intertwines the two (First to File and Prior User Rights) inseparably.

    It should come to the surprise of no one that many of the case law that we have held precious simply no longer applies in this brave new world of First to File. But the Supreme Court has specifically left the system questions to Congress, and Congress has decided that First to File is the way to go. Realizing the fallacy that a Trade Secret Holder impedes Progress in a First to File system (which almost by definition, he cannot, since it is a pure race), the underpinnings of the old case law must give way.

    This, after all, is the bargain that we have struck. This is the consequence that we have agreed to. This, Congress, with open eyes, and ears full of warnings pressed forward and made the law as it is.

  16. But would it not be strange

    There are many parts of the AIA (dark force) that some would consider…

    …strange.

    But not being strange is NOT a requirement of the proper reading of the law as written and as passed – many, many, many people warned of the strangeness. I even got off my duff and talked with my representatives about the “strangeness,” but to no avail.

    This is a critical flaw in your paper – you assume that the law cannot be strange and such an assumption is just not warranted.

  17. Paul,
    The AIA 102(a)(1) cannot be read as limited to only public disclosure activities. It denies a patent whenever
    “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;”

    I believe you are stretching the envelope by reading the second “or” (“or otherwise available to the public”) as a conjunctive that limits the scope of the bar under the statute while necessarily reading the first “or” in the disjunctive. In a plain reading of this sentence, the on-sale bar is disjunctive and independent of other elements.

    The remarkable logic you advance had been argued by Senate staff in private conversations to “explain” the intent of this ambiguous sentence but they refused to amend the language to fix it. This “explanation” exists nowhere in the record and it is worth nothing in court. It is also unpersuasive on its face for two reasons: First, it requires a reading that deviates from the ordinary use of language where the disjunctive “or” means that any and only one of the listed requirements need be met. See, e.g., Zorich v. Long Beach Fire and Ambulance Serv., 118 F.3d 682, 684 (9th Cir. 1997); U.S. v. O’Driscoll, 761 F.2d 589, 597-98 (10th Cir. 1985). A corollary is that use of the disjunctive “or” creates “mutually exclusive” conditions that can rule out mixing and matching; U.S. v. Williams, 326 F.3d 535, 541 (4th Cir. 2003) (“a crime may qualify as a serious drug offense by meeting all the requirements of (i) or all the requirements of (ii), but not some of the requirements of (i) and some of (ii)”) The use of the term “or” to mean “and”, however, is a “careless substitute” that is seldom applied. U.S. v. Moore, 613 F.2d 1029 (D.C. Cir. 1979); De Sylva v. Ballentine, 351 U.S. 570, 573 (1956) (the word ‘or’ used as a careless substitute for the word ‘and’). Moreover, there is no antecedent or other contextual guidance in the AIA that would expressly compel such reading.

    Second, if the drafters’ intent was to limit 102(a) only to actions that result in public availability, they could have used the term “or otherwise available to the public” and, as in S.3818 of 2006, omit the terms “public use” and “on sale” as superfluous. Note also that a similar simplifying and clarifying amendment was attempted in the House Judiciary Committee prior to the vote on HR 1249 and it was rejected. If these terms are not superfluous under your reading, perhaps you can explain if there is any on-sale or public-use activity you can think of that would bar a patent under the AIA but would not be “available to the public.” If there is none and “available to the public” is the gate, why does one need the terms “on sale” or “public use” in the statute? See Duncan v. Walker, 533 U.S. 167, 174 (2001) (“It is our duty ‘to give effect, if possible, to every clause and word of a statute.’”).

  18. Thanks Ron for adding that cite to the old Supreme Court Kendall v. Winsor remarks and your paper.
    But I was confused by your last paragraph. If AIA 102(a)(1) is read as limited to only public disclosure activities, then the confidential supplying of prototypes or parts to another company will not be any bar at all, and thus will not the loss of the one year grace period be academic as to those confidential sales? There would be no bar occuring until the product is publicly [non-cofidentially] sold or otherwise publicly disclosed, but will not that trigger a one year grace period from a public disclosure that is by or from the subject inventors?

  19. Re; “What I find more interesting is that the disclosure must now be enabling.”
    Yes that’s what ONE Senator said in a Senate colloqy, and I put that in my paper. But it’s not in the statute itself and it is another aspect of AIA 102 that is in dispute – as to whether a public disclosure that does not disclose a complete enablement could still provide a limited grace period for intervening art to the extent of its disclosure.
    But would it not be strange if a mere public disclosure provided more protection from intervening art during a grace period than a provisional application, which does require enablement?

  20. Adding to Ned Heller’s point on the constitutionally problematic interpretation of the AIA as legislating the European-style absolute novelty that Senator Leahy’s colloquy suggests, note that 30 years after the Pennock decision the Supreme Court also said in Kendall v. Winsor, 62 U.S. 322 (1858):

    The true policy and ends of the patent laws enacted under this government are disclosed in that article of the Constitution, the source of all these laws, viz., “to promote the progress of science and the useful arts,” contemplating and necessarily implying their extension, and increasing adaptation to the uses of society. By correct induction from these truths, it follows that the inventor who designedly, and with the view of applying it indefinitely and exclusively for his own profit, withholds his invention from the public comes not within the policy or objects of the Constitution or acts of Congress. He does not promote, and, if aided in his design, would impede, the progress of science and the useful arts. 62 U. S. at 328 (citing U.S. Constitution, Art. I, Sec. 8, Clause 8; emphasis added).

    To read more on this aspect of the AIA, see my paper: America Invents Act’s Repeal of the Secret Commercial Use Bar Is Constitutionally Infirm, (June 1, 2011). At link to bitly.com. The paper is based on the hypothetical construction according to the legislative intent of the Leahy-Hatch Colloquy. However, I do not believe the courts will so interpret it; I believe that Hal Wegner is correct – the on-sale and public-use bars are still firmly in place, but with no grace period.

    Over the years, the courts have defined on-sale activities broadly to include, for example, ordering goods on a commercial scale from a third party supplier such as a foundry or a subcontractor for pilot manufacturing goods that would be the subject of a patent application. See, e.g., Special Devices, Inc. v. Oea, Inc., 270 F.3d 1353 (Fed. Cir. 2001). Thus, currently those of us who rely on a third party foundry or contract manufacturer to manufacture goods in a commercial pilot that is part of the last phase of product development, have a year to correct errors, create new revisions and improvements and file a patent application with updated enabling specifications. This R&D business model used by many small companies will no longer be available after March 1213. Of course, large companies who have internal resources to do all that would not have on-sale events to worry about until they actually sell to the end customer, giving them more time. They are the ones who pushed so hard for this provision in the AIA.

  21. Actually,

    If one were to truly understand the deference given by those “founding fathers of our patent law” to Congress, it would be PRECISELY the credence that what Congress wants, Congress gets.

    Go back and read Pennock and note how many times “deference” is used. Senator Hatch simply does not have to mention ANY supreme court case, because Senator Hatch is the one with the deference. SO SAYS THE FOUNDING FATHERS OF OUR PATENT LAW

  22. sgb, I really and truly doubt that the courts will give an credence to the suggestion that Congress intended to overturn Pennock v. Dialogue, a decision penned by Justice Story and in which John Marshall participated. These are the founding fathers of our patent law speaking, the architects of the legal founding of the Republic.

    If there is any doubt about whether Congress intended to overturn such a respected case, I suggest that such doubt will resolved in favor of Justices Story and Marshall and not in favor of Senator Hatch, whose speech did not mention Pennock v. Dialogue at all.

  23. sgb,

    Is that quote part of the actual law?

    (No). Ooops too bad, so sad.

    There are many parts of the “congressional record” that are more than suspect on the 102 issue, including (espeically Senator Kyl’s monologue made without a quorum present – it’s in the “congressional record” but it is absolutely meaningless.

  24. What I find more interesting is that the disclosure must now be enabling. I’m curious how this will affect public disclosure.

    To quote Senator Hatch: “But, the important point is that if an inventor’s disclosure triggers
    the 102(a) bar with respect to an invention, which can only be done by a disclosure that is both made available to the public and enabled, then he or she has thereby also triggered the grace period under 102(b). ”

  25. From Pennock,

    “The constitution of the United States has declared, that congress shall have power ‘to promote the progress of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries.’ It contemplates, therefore, that this exclusive right shall exist but [27 U.S. 1, 17] for a limited period….”

    “If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should for a long period of years retain the monopoly, and make, and sell his invention publicly, and thus gather the whole profits of it, relying upon his superior skill and knowledge of the structure; and then, and then only, when the danger of competition should force him to secure the exclusive right, he should be allowed to take out a patent, and thus exclude the public from any farther use than what should be derived under it during his fourteen years; it would materially retard the progress of science and the useful arts, and give a premium to those who should be least prompt to communicate their discoveries.”

  26. Les, you confuse the on sale bar with prior art type public use, the latter being prior art to independent third parties. Private, i.e, trade secret, commercial use has never been prior art to third parties. Never.

    The new law, I think, goes out of its way to preserve that interpretation of “on sale.”

    What Paul is suggesting is that the new statute can be interpreted to also limit the on sale bar to public disclosures.

  27. The above hypothetical may be another interesting interpretive issue for AIA 102(a)(1): Assuming the device displayed was not released on a non-confidential basis to anyone, and only the exterior of the device is being displayed to the public at the trade show [thus not even a non-confidential internal analysis opportunity, which could be a bar in the EPO], with no public disclosure of the new internal feature or its function, is that going to be treated as a public use or on-sale bar event, or not?

  28. Hi Ned –

    On July 10, 2009, Paul F. Morgan denied working for Xerox in a Patently-O post.

    Possibly he was denying working for them AT THAT PARTICULAR MOMENT IN TIME, but the question was posed and he denied it. I guessed at the time that he was denying it because he didn’t want to make Xerox a target for a false marking lawsuit (based on comments he was otherwise posting), but that was just a guess, of course.

  29. Lets say one has a device for sale that can be updated from time to time by installing a new EPROM and that one invents an new and useful improvement thereof and PREPARES to implement it by programming a new EPROM and installing it in the next unit to come off the production line. Lets say that one is then notified of a trade show that must be attended and one grabs said device and shows the old features at the trade show.

    Is the improvement in public use? Under the old 102 and old court rulings, it was.

    However was it available to the public? No

    LOL. The hidden, undemonstrated and un-used feature was certainly as “available to the public” as it was “in public use.”

  30. BTW commentators, this paper is not placing any bets on the eventual outcome of this unresolved AIA 102(a)(1) legislative ambiguity controversy. It is merely presenting as many as possible of the respective possible arguments on both sides. A simple [but radical] reading of this statute as requiring an absolute elimination of all previous bars and prior art unless it was “public” definitely has its appeals [even though that will still not be the case for non-public prior application dates]. But, as noted in this paper, that interpretation leads to some strange and very undesirable consequences in overuling long established case law based on strongly expressed [even by the Sup. Ct.] public and patent policies that should be seriously considered, even if really unambiguously intended.

  31. Lets say one has a device for sale that can be updated from time to time by installing a new EPROM and that one invents an new and useful improvement thereof and PREPARES to implement it by programming a new EPROM and installing it in the next unit to come off the production line. Lets say that one is then notified of a trade show that must be attended and one grabs said device and shows the old features at the trade show.

    Is the improvement in public use? Under the old 102 and old court rulings, it was.

    However was it available to the public? No, it was not demonstrated to the public. No one of the public new the improvement was available or even what the improvement was. No member of the public had the opportunity to purchase or use the improvement.

    So, if “in public use” means “available to the public” what was once a 102(b) bar to patentablity (last years trade show) may no longer be a bar.

    See the ambiguity yet?

  32. Ned,

    Your interpretation of Pennock has been shot to pieces.

    Many times.

    By many people.

    Do you really want to go there again?

  33. I agree with Paul that as a matter of statutory construction one could read the catchall as eliminating private commercialization as both prior art and as a statutory bar. But I think Wegner is right that such a construction would overrule Pennock v. Dialog, a decision that created the on-sale bar in 1829, and a decision that was based at least in part on the constitution. The courts, especially the Supreme Court, would not adopt such a construction unless there was no other way to interpret the statute.

    But there is.

  34. Spock?

    Captain, the ambiguity detectors are detecting zero ambiguity in this statute.

    But what does it mean Spock?

    Exactly what it says Captain.

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