Did the AIA Eliminate Secret Prior Art?

In many ways, prior art is the core of the US patent system. Patentability requires that any invention-to-be-patented be “new” as defined by 35 U.S.C. §§ 101, 102, and 103. Prior art serves as the underlying evidence to prove that the invention is not new. As implied by its name, prior art has a temporal aspect in that the “prior art date” must come before (i.e., be prior-in-time to) the critical patentability date of the invention in question. Sometimes, the identical invention is found within a single prior art reference. In that case, the newness doctrine of “novelty” as defined by 35 U.S.C. § 102 will do the invalidating work. However, more often than not, a prior art reference will only teach a portion of the purported invention. In that case, the prior art may still serve a useful roll when applying the obviousness doctrine defined by 35 U.S.C. § 103.

We’ve talked about two key features of prior art: (1) being earlier in time and (2) teaching some aspect of the invention being claimed. Those two elements are never sufficient to satisfy the evidentiary requirements of prior art. Rather, the law always requires one additional element to take this information from being merely prior private knowledge to being prior art. As part of the America Invents Act move to a first-to-file regime, this additional step will always involve (3) transferring knowledge.

One argument favoring a first-to-file regime is its focus on publicly available information rather than privately held knowledge. And, in most cases, the step of transferring of knowledge highlighted above is a public act. Thus, prior art may be created through publication, patenting, or public use. 35 U.S.C. § 102(a)(1) (post-AIA). The AIA retains one form of temporally-secret prior art in that the prior filing of a patent application by “another inventor” will be deemed prior art as of its filing date. 35 U.S.C. § 102(a)(2) (post-AIA; formerly defined by § 102(e)). This is secret prior art because patent applications are typically kept secret by the USPTO for 18-months after they are filed. However, I term § 102(a)(2) prior-art-as-of-filing-date as only temporally (or temporarily) secret because such a reference cannot be used as prior art unless and until the prior-filed application is made public through either publication or patenting. Perhaps because of the unfairness of associated with its secrecy, most other countries besides the US only allow this type of prior art for novelty arguments and not for questioning obviousness (inventive step).

The AIA did eliminate several types of secret of prior art, including prior secret invention by another inventor under pre-AIA § 102(g) and prior knowledge transferred from another to the patent applicant under pre-AIA § 102(f). The individualized secrecy of these prior art references created two main problems: (1) that patentability could not be fully evaluated with going through the arduous process of obtaining additional information from interested parties and (2) that the secrecy gave interested parties more of an opportunity to fraudulently create (or destroy) documents after-the-fact. Making patentability based upon publicly available information can hypothetically lead to some unjust outcomes, but it has the enormous benefit of providing clear(er) notice to anyone who cares to look.

Two important secret prior art questions remain — namely whether either (1) secret commercial uses (by the patentee) or (2) secret on-sale activity (by anyone) create prior art that can invalidate a patent on novelty grounds and contribute to invalidation on obviousness grounds. The Patent Act never expressly authorized the first type of prior art and has arguably now rejected the second. Advocates for a transparent prior art system argue that the AIA should be interpreted as eliminating both.

Secret Sales: One type of prior art that is traditionally thought of as potentially secret is created by what is known as the on-sale bar. An invention that is on sale before the critical patenting date will result in prior art that renders any patent invalid. There are a few ways that a sale or offer-to-sell could be secret: for example, (1) it might be an offer between two individuals that is subject to a (formal or informal) confidentiality agreement or (2) it might be an offer that does not fully disclose the scope of the invention.

The AIA retains the identical language of its predecessor statute regarding on sale activity that occurs prior to the defined critical date. Compare 35 U.S.C. § 102(a)(1) (post-AIA) with 35 U.S.C. § 102(b) (pre-AIA). Although the “on sale” term itself is identical, the context of the new statute is arguably different. In particular, the new statute has added a catchall phrase “otherwise available to the public” that suggests that the on-sale activity must also be available to the public. The new statute reads as follows:

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 …

The open question is whether the language here creates a legally cognizable implication that the “on sale” activity must be available to the public as well.

Secret Commercialization by the Patentee: In his 1946 decision in Metallizing Engineering, Judge Learned Hand explained that a patentee’s commercial use of its process (even if done secretly behind factory walls) counted as a “public use” sufficient to invalidate the later-filed patent application. The court wrote “That it is a condition upon an inventor’s right to a patent that he shall not exploit his discovery competitively after it is ready for patenting; he must content himself with either secrecy, or [a patent].” Under the rule, secret commercial uses of an invention by a third party does not count as a public use. This distinction is found nowhere in the patent statute, but has been judicially recognized for many years. While the new statute retains the “public use” language, many suggest that a strong congressional intent that the new statute eliminate the Metallizing rule.

USPTO Proposed Interpretation: In a set of proposed examination guidelines, the USPTO indicated its interpretations that the statute has altered these provisions in favor limiting the application of secret prior art. In particular, the USPTO’s position is that, while the statute is not entirely clear on these points, the legislative history indicates that that prefiling secret sales and commercial uses do not qualify as prior art under the revised Section 102. The PTO writes: “The legislative history of the AIA indicates that the inclusion of this 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.

For the most part, patent attorneys appear to agree with the USPTO’s proposals. The American Bar Association’s IP Law Section writes:

ABA IPL respectfully submits that the passage “otherwise available to the public” reflects the touchstone of what constitutes prior art under the AIA under section 102(a)(1). This section requires availability to the public or public accessibility is an overarching requirement. Such accessibility is critical to provide a simpler, more predictable and fully transparent patent system. As such, for a “public use,” for a determination that an invention is “on sale,” as well as to assess whether an offer for sale has been made, the statutory requirements under the AIA require a public disclosure. Thus, non-public offers for sale (and non-public uses) would not qualify as prior art under the AIA.

The AIPLA agrees, writing:

AIPLA believes that an offer for sale needs to be public to qualify as “on sale” prior art under §102(a)(1). . . . AIA §102(a)(1), unlike pre-AIA 35 U.S.C. §102(b), contains the residual clause “or otherwise available to the public.” This is a major policy change achieved by the new legislation, which would further the goal of increasing objectivity in the identification of prior art. . . .

[T]he legislative history of the AIA indicates that the inclusion of this clause in §102(a)(1) should be viewed as indicating that §102(a)(1) does not cover non-public uses or non-public offers for sale. AIPLA believes that such an interpretation reflects the clear intent of Congress. It is also consistent with the broad goal of global harmonization under a first-inventor-to-file system.

The IPO agrees as well – arguing in its comments to the USPTO that the AIA “overrules Metallizing Engineering by excluding ‘secret’ commercial activity from the ‘on sale’ provision” and that the only on sale activity relevant to patentability under the AIA is when an invention is “publicly on sale.” LES is also on board with this interpretation.

Several individuals disagreed, including Lawrence Pope who wrote:

Certainly, any change in patent law which abandoned a long established policy and allowed inventors to engage in secret commercial exploitation of their inventions for as long as they liked without forfeiting their right to obtain valid patent protection on the same, would require quite explicit statutory language. In addition, it would be expected that any such major change would be reflected in a more extensive legislative history than the mere comments of two members. One would at least expect to see it reflected in the Committee Report reporting on the legislation to the House of Representatives.

Mark Lemley also argued that the PTO’s interpretation is quite problematic:

[T}he proposed Guidelines take the position that the AIA has reversed an unbroken line of precedent of both the Federal Circuit and the regional circuits tracing back to Judge Learned Hand’s decision in the Metallizing case. Those cases hold — for impeccable policy reasons — that the term “public use” in old section 102(b) should be interpreted to prevent an applicant from making a secret commercial use for more than a year while delaying the filing of a patent application. A contrary conclusion, as the PTO now proposes, will enable inventors to keep their process inventions secret for years or even decades, and then surface and file a patent application. That is directly contrary to the goals of first-inventor-to-file in the AIA, which encourage early filing of patent applications.

Concluding that Metallizing and the cases that follow it were abrogated will have another, even more pernicious effect. Metallizing, Gore v. Garlock, and other cases interpret the term “public use” in the old statute. One might reasonably conclude that those cases stretch the meaning of that term, but what the courts said they were doing was interpreting “public use.” The term “public use” appears unchanged in new section 102 under the AIA. For the PTO to conclude that the new law opens the door to reinterpretation of the settled meaning of terms present in both the old and new statutes opens a dangerous door. Parties and courts might be expected to try to revisit the meaning of “on sale,” “patented,” “printed publication,” and many other settled statutory provisions, creating enormous uncertainty. To take just one example, the inherency doctrine, like the Metallizing rule, is not articulated expressly in either the old or new statute. If the reenactment of the term “public use” opens the door to revisiting Metallizing, it also opens the door to revisiting inherency, the “ready for patenting” rule in on sale bar, and a host of other settled cases. The PTO, patent applicants, and litigants would be much better served by leaving existing precedent interpreting unchanged statutory terms in place.

Read more comments here: http://www.uspto.gov/patents/law/comments/. (Note, the equally major issue is the USPTO’s interpretation of the disclosure grace period that is also part of the commentary).

What’s the Big Deal?: The USPTO does not have substantive authority to shape the interpretation of 35 U.S.C. § 102. In the end, this issue will be resolved by the courts or else clarified by Congress in a technical amendment. In many ways, the arguments above are simply a preview for a Federal Circuit and Supreme Court ruling on the issue. One problem with the USPTO’s narrow view of the prior art is that it delays the eventual resolution of this issue since it gives patent applicants nothing to challenge. In any event, this is a debate that will continue for at least the next decade and likely beyond.

40 thoughts on “Did the AIA Eliminate Secret Prior Art?

  1. Good. Lets stop trying to clothe the king in invisible threads then.

    The sooner we confront the massive changes, the sooner we come to a settled predictability under which to proceed. Attempts at minimizing to “sneak in” policy that is contrary to the current scheme should be avoided.

  2. Whether it is “consistent with current law” is totally immaterial and can only cause confusion under cover for those who want to import law from a different legislative era.

    The differences – especially the removal of personal bars (note the new section heading an legislative record) – are extensive and massive.

    Do not be fooled into thinking these are mere minor changes (with the royal “we” overtones).

  3. anon, good post. 
     
    However, I think most of what is in the AIA is OK and actually consistent with current law. I like removing inventorship disputes from validity challenges. I like keeping prior art limited to the public domain. I like prior user rights.

    I don't like worldwide non-publication public use and on sale activity being prior art the United States.

    But mostly I do not like being able to keep an invention secret and still being able to patent at any time, even years after usage has begun.

    Like others, I think the current act can be construed in a way that will preserve the current law on this topic. However if it turns out that there is no way to construe it to be consistent with current law, then my position is that the AIA is unconstitutional.

  4. That is indeed the issue for the courts to decide

    A delicate (but brutal) counterpoint to this statement is that what the courts are to decide must be based on what Congress has NEWLY written.

    As detailed in my other post today, what the Federal Circuit and the Supreme Court decided previously is expressly immaterial based on what Congress has NEWLY written.

    One of the advantages of modern society (and in your case and for your viewpoint a disadvantage based on outcome) is that the policy record is available so quickly. Plainly speaking, your view (while I may think is admirable in itself) was expressed as a warning to those rewriting the law as the law was being debated – and that view was rejected.

    As I post today, “the issue” for the courts to decide is not a naked redirection of a policy question directly contrary to what Congress has enacted. I say to you that your position lies too far into the realm of judicial activism. “The issue” for the courts will be to uphold and apply the new policy as set forth by Congress or risk ruling the entire AIA unconstitutional – and by the way, that would include the several new Patent Offices in major cities (and voting districts), changed court proceedings (aimed at the pejoratively labelled “Trolls”), and even the annihilation of the false marking cases, all of which would need to revert to pre-AIA legal status.

    The big picture is most interesting, is it not?

  5. What Armitage has striven to do in the AIA is confine all prior art to publicly available art. That is a laudable goal. I support it.” (emphasis added)

    Ned, there are direct (albeit perhaps unintended – but perhaps intended) consequences to this that you appear not to support. I am not sure that you even recognize the necessary link. Those consequences go hand-in-hand with what you support (much like how the expansive PUR was sold as a necessity for the US version of First Inventor To File.

    Someone on another thread questioned if we wanted to give the patent system over to the big (tech) giants – I put “tech” in parenthesis as the better question does not depend on that word.

    Look from which camp Armitage comes from. Look at those who pushed the PUR, who supported the PUR. All of this goes hand in hand. The reasons given for the PUR say this explicitly.

    “Giving over” is exactly what we have done.

    Further, much like the Korean chaebols, the AIA was constructed to be so massive as to induce the courts not to overturn it as failing a constitutional question.

    Remember its history: an amendment for being able to sever individual provisions if any such individual provision were found unconstitutional was explicitly considered and rejected.

    Congress (or the entities pulling the strings) have decided purposefully for an all or nothing gambit. Why else would the attempt at severability fail?

    102 was purposefully and extensively revamped. Personal bars are gone. This does mean that the case law that depended on those personal bars is likewise gone. In direct counter to the view of Paul F. Morgan, Congress is under no requirement to identify the case law it abrogates. Certainly not when the very public aim was to not codify, but drastically alter the law. And it is not like the public and the patent bar were not warned that such a drastic change could do exactly as what is becoming evident. The public record is very clear on this.

    When you tie in the entire package of the AIA, including (especially including) PUR, the clear recognition of the elevation of Trade Secrets as being protected (grotesquely, in my view) by patent law is unmistakable. Congress has decided to create an expansive right (albeit one that may not rise to the patent right itself) where once “Federal Circuit and the Supreme Court on public policy grounds” decided otherwise. Congress, whose dominion includes explicit control of public policy as expressed in the law they write, has set forth a new and undeniably different direction.

    Any attempt at bootstrapping old case law written to address a vastly different statutory regime must fail. The courts cannot elicit a public policy objective directly contrary to the objective installed in the law.

    And we should not be inviting such a Lochnerian initiative for want of that initiative’s unintended consequences. The “easy path” is also the dangerous one.

    The proper forum for this type of policy battle is in the government body where direct accountability resides (and where the Constitution places the complete authority) – Congress.

    I suggest we all gird ourselves for the brave new world instead of pining for the old one – or pushing for easy but dangerous solutions to the problems our representatives have (purposefully and with warnings aforesight) created.

  6. Not sure I understand your question Fish scales.

    To paraphrase, Can inventors (and their patent counsel) rely on the law when their patent is later litigated?

    This is an obvious “yes” if the law is reached correctly. As you fully know, court decisions are overturned indicating that the correct reading of the law is not always reached.

  7. “prefiling secret sales and commercial uses do not qualify as prior art under the revised Section 102″ Can inventors (and their patent counsel) rely on this when their patent is later litigated?

  8. Paul,
    I did not say that the underlying rationale for public policy went away.

    Wait. I did. That’s because the body of government charged with drafting law with public policy in mind (as expressly mandated by the Constitution) just changed (massively) the law that addresses all of the public policies. Guess what? They don’t even have to tell you that they expressly overruled case law either!

    Here’s a clue: policy setting is a Legislative power for patent law in the US.

    I suggest you gird yourself for the brave new world instead of pining for the old one.

  9. That is indeed the issue for the courts to decide for patents granted on applications filed after next March. But it is also important to correctly understand the current law, which will apply in parallel for many more years – until all patents based on applications filed before that date end their enforceability.
    Also, I do not agree that the Courts will completely ignore some of the strong public policy arguments in the prior case law. For example, there is no AIA legislative history or specific statutory language stating that the non-bar personal forfeture [equitable not legal] doctrine of Metallizing Engineering was being overuled. Nor any suggestion, legislative history or specific AIA language that Congress intended to now allow adding a full patent term for an invention onto and after an unlimited term of secret commercial use, even though that is expressly condemned by both the Federal Circuit and the Supreme Court on public policy grounds, like IC, not statutory interpretation.

  10. The drafters, who clearly wanted to do away with the on sale bar, did so with slight of hand.

    First they gave us 102(b) sans “in the US.” We were not alarmed and said nothing, or what we said fell on ears that only hear the song of the siren.

    Then they gave us “otherwise.”

    But, the way they construed “otherwise” reads on sale out of the statute. A public disclosure is a public use and it makes no difference whether a commercial transaction was involved.

    In the words of Lincoln, one sees the foundations being laid, the framework erected, the doors and windows in their expected location, a roof covers the lot. Eventually, it become clear what is being erected.

  11. The goal of many, for 20+ years, was harmonization. The framers of the AIA knew that on sale was not a bar in Europe. They intended to eliminate it in the US.

    An offer for sale that publicly exposes an invention is a public use. Public exposure is what makes it prior art. Not the commercial purpose.

    Confining on sale to acts that publicly expose the invention, while permitting private offers and commercial exploitation reads “on sale” out of the law. It become irrelevant. Harmonization is achieved.

    That this was a goal of the framers was apparent. However, their success imperils the whole of the AIA because of Pennock v. Dialogue.

  12. Paul, secrecy has nothing to do with an on sale bar. It is, as you have noted, an equitable doctrine, just as noted in by the SC in Pennock. One abandons his right to obtain a patent if one commercially exploits prior to filing.

    Prior art, on the other hand, is based on the principle that one, even if he is an original inventor, cannot withdraw from the public domain subject matter already known and used. The principles involved are entirely different.

    I criticize Dennis because, over the years, he does not seem to have understood the basic principles involved. His statements in this post reflect his basic misunderstanding.

    What Armitage has striven to do in the AIA is confine all prior art to publicly available art. That is a laudable goal. I support it.

    But on sale operates on an entirely different principle that prior art. I hardly believe that Bob did not understand this.

  13. Using old terminology in a different manner and context (re: the elimination of the “loss of right”) definitely means that old case law with those very same terms applied in a very different legal context are prima facie inapplicable – no matter how “convenient” we might feel an otherwise treatment would be.

    There are very real consequences such a massive undertaking of law change that wa done with the AIA. We should not sugar coat this.

  14. Yes, they definitely intended a change, but still used the old terminology “on sale” instead of “was sold” (In Europe: sold and delivered without confidentiality restrictions). As the whole discussion indicates, “on sale” may be difficult to fit into “available to the public”.

  15. Paul,

    Part of the point of this article is that with such a (purposeful) massive change – not limited to merely “prior art” but to ALL conditions of loss of right, the ability, the legality? of even giving citations AT ALL is in question.

    Thus you giving citations (from pre-AIA era) to support a view post-AIA era is itself unavailing.

    The game has been fundamentally and radically changed. This was decidedly NOT a codification exercise, and EVERY assumption will be (and should be) challenged.

  16. There seems to be some serious confusion and unfair criticism of Dennis above as to secret sales under the present 102 “on sale” bar. It should not be confused with Metallizing Engineering situations of a secret process being used to make and sell a product for longer than the grace period, which product is publicly and commerically sold,but which product does not disclose the secret process by which it is made.

    In contrast to 102 “public use” the 102 “on sale” bar does not now contain the word “public.” The “on sale” bar does not even requiring a completed actual reduction to practice of the invention, as long if it is sufficiently conceived to be “ready to patent” and any such proposed [not just actual] product that would incorporate the invention is being commercially offered for sale. Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998). In a commercially shocking decision the Federal Circuit has even held that there is an “on sale” statutory bar from “on sale” activity between prototype parts suppliers and intended manufacturers that was done [as usual] in secret. Special Devices Inc v. OEA (Fed. Cir. 2001).
    If there is Fed. Cir. case law requiring an “on sale” activity to be public in order to create a 102 statutory bar, as some allege, it would be more helpful to cite it rather than just criticise Dennis.

  17. If that were so, then why did Congress purposefully change the title of the section and eliminate “and loss of right to patent” ?

  18. It is quite possible that the wording of the AIA: “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”, was a commmittee effort to both 1. preserve the old US concepts and 2. adapt to the “what was divulged to the public?” prior art concept of Europe and the rest of the world (i.e. the “OTHERWISE available to the public” wording in the AIA). It doesn´t work for the established US “on sale” concept.

  19. In the interest of international patent harmonization, one should keep in mind that the “offer for sale” personal bar (old 102(b)) does not exist outside the US. In most (all?) of the world, if the offer for sale was confidential (eg under NDA), it is not a bar. Further, outside the US, in many jurisdictions that I am familiar with, even public use is only a bar if the use was disclosing (i.e. using a system in a locked box, in public, where only a criminal act would cause disclosing of the functioning of the invention, against the inventor’s wishes, is not considered public use).

  20. What we know and what I think:
    Current Law
    1. Secret prior art generally is not prior art to third parties.
    Exceptions:
    For 102:
    (e) prior US patents and applications and some PCT as of their filing date;
    (g) Prior invention non abandoned, etc.; and
    (f) prior invention communicated to the applicant.
    For 103 purposes:
    (e) prior US patents and applications and some PCT as of their filing date;
    (g) prior invention that is disclosed both to the applicant and in a later patent. In re Clemens
    (f) prior invention disclosed the applicant. 102(f). OddzOn Products.
    Statutory exceptions: e, f, g do not apply to commonly owned inventions; or to joint research ventures.

    New law:
    1. Secret prior art generally is not prior art to third parties.
    Exceptions:
    For 102:
    (a)(2) prior US patents and applications as of their filing date;
    Statutory exceptions: 102(a)(2) art does not include commonly owned joint research ventures.
    With the repeal of 102(f) and (g), secret prior art, even that communicated to the inventor, is not prior art to applicant. The applicant can patent inventions that are communicated to him. Sections 115, 116 are not grounds for invalidity.

    On Sale is not prior art and never has been. It is a personal bar. If a deriver files on the invention of another communicated to him, the on sale bar should apply.
    I agree with the comments above that the repeal of Pennock v. Dialogue is not ineluctable to the extent one understands on sale to be a personal bar.
    I do not agree with the PTO that 102(f) still exists in 101. The prior invention of another is not prior art, period, even if one knows about it.

  21. I think the leaders of the various coalitions knew that secret commercial use was not prior art, but a personal bar. They could not have gotten to positions of leadership without knowing that.

    Yet they told congress that secret commercial use was prior art.

    Kyl, believed them. He talked about fabricated secret evidence in China that could invalidate a US patent. That statement fully reflects his fundamental misunderstanding of US patent law. He was misinformed.

    I have no idea if the courts will take into account the the fact that Congress was misinformed of the current state of the law, but they should.

    (Another point here, the US since its very beginning was a first to invent system. However, Smith and others stated in the House floor debate that the US was a first to file system until 1870.

    Somebody lied to them.)

    The powers that be that rammed through the AIA were very loose with the truth in many different instances. When someone does that, we should assume that they could not have gotten their way if they had relied on the truth.

  22. anon, I also recall a great deal of discussion concerning Pennock in the House floor debate, and the committee hearings, albeit, not by name. They referred to a 1829 Supreme Court case that would be overruled by the Senate Language. The house committee took the issue under advisement to see if they could find compromise language that would deal with the on sale bar… In the end, Smith did not go with any compromise, but adopted the Senate language.

    But, the issue is not overturning Metallizing. Metallizing expressly relied on Pennock, a Supreme Court case. Pennock was the origin of the on sale bar. It will be overturned, not Metallizing.

  23. Indeed, Secret commercial use has always been a bar since Pennock:

    From Metallizing:

    “From the foregoing it appears that in Peerless Roll Leaf Co. v. Griffin & 520*520 Sons, supra, 2 Cir., 29 F.2d 646, we confused two separate doctrines: (1) The effect upon his right to a patent of the inventor’s competitive exploitation of his machine or of his process; (2) the contribution which a prior use by another person makes to the art. Both do indeed come within the phrase, “prior use”; but the first is a defence for quite different reasons from the second. It had its origin — at least in this country — in the passage we have quoted from Pennock v. Dialogue, supra, 2 Pet. 1, 7 L.Ed. 327; i.e., that it is a condition upon an inventor’s right to a patent that he shall not exploit his discovery competitively after it is ready for patenting; he must content himself with either secrecy, or legal monopoly.”

  24. Excellent post here.

    Dennis does not seemed understand, and has never seemed understand because I have observed his postings for years, the difference between a personal bar and prior art, to the extent that prior art is understood properly in that prior art will invalidate all patents. A personal bar however will not. It will bar only the party subject to the personal bar. That is why it is called personal.

    The doctrine began in Pennock v. Dialogue, a case where the patentee a commercially exploited his invention for years prior to filing a patent application. The case clearly was about abandonment of the patent applicants right to file and obtain a patent. This was not a case about third-party public use..

  25. Paul, I fully agree with your post. However, when Dennis says that secret use is prior art against any patent, when he knows that statement is false, I begin to wonder about Dennis’s motives.

  26. Dennis said, without citation to authority:

    “Secret Sales: One type of prior art that is traditionally thought of as potentially secret is created by what is known as the on-sale bar. An invention that is on sale before the critical patenting date will result in prior art that renders any patent invalid. ”

    Learned Hand said in Metallizing:

    “In Gillman v. Stern, supra, 2 Cir., 114 F.2d 28, it was not the inventor, but a third person who used the machine secretly and sold the product openly, and there was therefore no question either of abandonment or forfeiture by the inventor. The only issue was whether a prior use which did not disclose the invention to the art was within the statute; and it is well settled that it is not. ”

    Dennis, Secret use is not prior art to 3rd parties and has never been prior art to 3rd parties.

  27. The Metallizing Engineering Doctrine is not a 102 prior art issue, thus not requiring the PTO to take the position that this doctrine has been overruled by the AIA. As it’s case law makes clear, it has always been a purely personal equitable forfeiture, not a form of prior art, as not even applicable to anyone other the secret prior user itself, and not properly based on 102. If the PTO interprets AIA 102 [until any judicial decision to the contrary] as excluding any and all secret [non-publicly disclosed] prior art, the PTO can, and should, simply say that in its rules and commentary, without any need to also expressly say that the Metallizing Engineering Doctrine is overruled.

    [Overruling of the actual Metalizing Engineering Doctrine is certainly on the agenda of certain parties, since it would allow unlimited-term secret commercial use protected by trade secrecy laws before also tacking on a full term of patent protection for the same invention. But that is a highly controversial and substantive proposition, condemned by both the Federal Circuit and the Supreme Court, that the PTO need not address and should not address.]

  28. Yeah may have misspoke on the Coke analogy — the whole “commercial exploitation” analysis applies to both on sale and public use, so it’s theoretically possible that secret internal use could theoretically trigger the “public use” bar if some situations.

  29. Much better served – unless you are not.

    Clearly, not everyone will be so better served. Quite in fact, the large mega-internationals will not be better served and (very likely) that is precisely why the language is what it is.

    Congress was warned of this (and I personally warned all of my representatives).

  30. Yeah on the Metallizing case, it was decided before the enactment of the 1952 Patent Act. A purely secret “use” of the invention under the 1952 Act, even for decades, is not an invalidating public use, even if you were exploiting the invention internally for some kind of commercial gain. You had to have some kind of outside use to be a “public use.”

    This rarely comes up, of course, because usually there is some other reason the invention would be barred — usually because the embodying product you built was sold. For example, Coke’s secret and internal use of its soda formula for a century may not be “public use” per se, but they could never patent it because the “on sale” bar is triggered by all of those cans embodying the secret formula.

    But the offer for sale analysis is off base and wrong. You should not be allowed to go out and offer the invention for sale and sell it to third parties for decades simply because you sold it subject to an NDA. For certain vertical industries such as manufacturing, etc., that essentially eliminates any kind of statutory bar, since products are routinely sold business-to-business subject to confidentiality obligations. The industry groups’ analysis, obviously controlled by the inventor/plaintiffs bar, is shallow and unprincipled.

  31. You need to draw a clear distinction here between “public use” and “on sale” — they are two entirely separate grounds of invalidity.

    Public use even before the AIA required “public” use; it doesn’t require wide dissemination, but covers “any use of the claimed invention by a person other than the inventor who is under no limitation, restriction or obligation of secrecy to the inventor.” In the Eolas v. Microsoft case (Fed. Cir. 2004), for example, a meeting between a couple of engineers at Sun Microsystems and a third party where a prior art system was shown, was “public” because there was no NDA.

    So the example of using an internal process for years within a company is off base. This isn’t a public use, and wasn’t under previous law, if it was maintained as a trade secret and not shared with outsiders who didn’t have confidentiality agreements.

    Offers for sale, however, are different under old law — confidentiality does not matter, secret offers for sale by the inventor can bar a patent. There seems to be no basis in the new statute or public policy for overruling this line of cases, either, and certainly not on the “otherwise” phrase in the new law.

    The PTO whiffed on this one, frankly, which isn’t surprising since they really don’t deal with this kind of prior art. They won’t locate it during examination, and it only gets considered if the inventor voluntarily discloses it on some disclosure statement, which happens from time to time but it’s exceedingly rare. It’s usually ignored by examiners anyway because, even when disclosed, it’s almost never presented with sufficient completeness to allow the PTO to find the factual predicates needed to actually issue a rejection based on it.

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