Guest Post: Knowing what is Known and Knowable

Guest post by Professor Sharon K. Sandeen

For several years now, I have been thinking about how the changes that the America Invents Act (the AIA) wrought to the definition of prior art will change trade secret practice. Specifically, were they intended to narrow the definition of prior art in ways that would make it easier for inventions to be kept as trade secrets and used commercially without triggering the one-year grace period in which to file a patent application?

My initial interest in this topic was sparked by the noticeable deletion of the word “known” from section 102. Former section 102(a) used to state that “[a] person shall be entitled to a patent unless the invention was known or used by others in this country. . . before the invention thereof by the applicant for patent.” Most of the language of “old” section 102(a) is now in “new” section 102(a)(1), but not the word “known.” Also, what is to be made of the added phrase “otherwise available to the public.”

To date, the debate about whether the AIA intended to narrow the definition of prior art in ways that would heighten the ability of inventors to protect their inventions as trade secrets has focused on the meaning of “public use” and whether the phrase “otherwise available to the public” is a new category of prior art or was intended to modify the other listed categories. This makes sense when you consider that the previous “known” category focused on what others knew at the time of the invention, and the issue of whether the grace period is triggered concerns the acts of inventors. Thus, one way to look at the deletion of “known” is to realize that new section 102 simplified things by removing the only type of prior art that applied to “others” but not to the inventor. Now, all the categories of prior art listed in section 102(a)(1) apply to acts of others and inventors, and section 102(b) focuses on the acts of inventors.

I want to suggest another way of looking at the new section 102 and the deletion of the word “known” that helps make sense of both section 102(a) and 102(b). Under well-established trade secret doctrine, the prior art that prevents information from qualifying as a trade secret is expressed as that which is “generally known” and “readily ascertainable.”  What is generally known is broadly defined to include what is known to the general public and what is known within discrete industries or groups of individuals who are experts in the field. Information is readily ascertainable if, even though it is not generally known, it can be found without much time, trouble or expense. Among trade secret scholars, we say that the difference is between what is “known” to the public and what is “knowable.”

Applying the categorizations of “known” and “knowable” to the AIA, it can be seen that new section 102(a) refers to what is knowable. What is stated in a patent or a printed publication or what is in use or on sale, is probably not generally known, but it is readily ascertainable. Read this way, the phrase “otherwise available to the public” makes perfect sense because it captures the essence of the other listed categories and establishes that any information that is ascertainable before the effective filing date would constitute prior art. How readily available the information must be is an question that the AIA does not address directly and that will have to be determined by the courts.

Applying the trade secret concept of “known” to new section 102(b) helps make sense of the language of 102(b)(1)(B) which refers both to “the subject matter that was disclosed” and information that was “publicly disclosed” before such disclosure and, in a round- about way, establishes that section 102(a) does not require information to be generally known by the public. The language “the subject matter that was disclosed” must mean the information that is listed in section 102(a) which only needs to be “knowable.” Information that is “publicly disclosed,” in contrast, means information that was actually disclosed to the public (i.e., “generally known” in trade secret parlance).

55 thoughts on “Guest Post: Knowing what is Known and Knowable

  1. OT,

    But does anyone her on the blog even realize that the last post from Prof. Hricik 404’s out for two days now…?

    Anywho – the link to the Times article is: link to mobile.nytimes.com

    Maybe someone should care about how the Royal Nine are wielding their law making authority (or proper lack thereof).

  2. The legislative history regarding the “otherwise available to the public” provision is very clear…why is the intent and meaning even being debated?

      1. I found two things that are substantive on the legislative history. One person says that “otherwise is known to the public” is problamatic… in 2005. Statement of Christine Siwik, 2005 WL 1767161. The other explains that commercial use need not be “otherwise known to the public”… in 1997. Statement of Michael Kirk, 1997 WL 90751.

        Seriously, I would like some citations to the legislative history on this if you have it.

        1. See A Guide to the Legislative History of the America Invents Act: Part I of II, The Federal Circuit Bar Journal Vol. 21, No. 3.

          See Report of the House Committee on the Judiciary, Report 112-98, Part 1, dated June 1, 2011.

          1. In the Report of the House Committee on the
            Judiciary accompanying H.R. 1249, it is noted that the then-proposed inclusion of “the phrase ‘available
            to the public’ is added to clarify the broad scope of relevant prior art, as well as to emphasize the fact that
            it must be publicly accessible”

      1. The Senate soliloquy – see also the item written by paul as noted below (spoiler alert: that article is steeped in wishful thinking).

          1. Nope – it is not.

            Remember that the process went back and forth – the soliloquy is in the record in the middle of that process and BEFORE the final vote.

            There have been those that claimed the soliloquy does not matter because of this “after the vote” thing – they are blowing sunshine.

            1. There was one statement made immediately preceding the vote in the Senate (forgot the Senator at the moment) and then there was post vote memorializing of intent too…

              1. ..and the post vote memorialization was prior to the legislature bouncing back and forth between the House and Senate….

                As I said: those claiming a “after the vote – it doesn’t count” notion are blowing sunshine.

  3. I got this in a fortune cookie from a Chinese restaurant yesterday, and it seemed particular appropriate to cite re the patent law changes of the AIA that now apply only to new applications and patents therefrom, yet will run in parallel with their prior statutes for prior filed patents for many years:

    “In the ocean of knowledge, only those who WANT to learn will see the land.”

  4. If the cure for cancer in public use — available to the public — at a clinic, is it prior art despite the fact that only those in the clinic know what it is?

    If a new hose is invented and sold by the inventor or his licensees without revealing how it is made, is that invention otherwise available to the public?

    Coke is on sale and widely available to the public. Is Coke prior art despite that no one knows how to make it?

    Is there still an enablement requirement for prior art?

    I think there are problems with the wording of the statute that create ambiguities.

    Next consider the thief who finds the formula for Coke in a locked safe in one of Coca-Cola’s buildings. He patents the formula. Is his patent invalid over the non enabled prior art Coke? How can litigators properly inquire into whether the inventor actually invented?

    The first to invent, but who does not use until after the filing date of the second inventor, is sued for infringement. Can he defend on 101’s requirement that the invention be “new.” It certainly was not new at the time the second inventor discovered it.

    1. Further to the thief example, does it make any difference if the thief steals the invention from his fellow employee?

      What if the corporation files on it not knowing of the theft, and later finds out about it. What are their duties of disclosure?

      What if the corporation sues knowing of the bad inventorship. Can the infringer defend in any way?

      1. If the cure for cancer in public use — available to the public — at a clinic, is it prior art despite the fact that only those in the clinic know what it is?

        Yes. Its right there in the statute.

        If a new hose is invented and sold by the inventor or his licensees without revealing how it is made, is that invention otherwise available to the public?

        A claim to the hose has prior art. A claim to the method of making the hose is not.

        Coke is on sale and widely available to the public. Is Coke prior art despite that no one knows how to make it?

        Of course. That’s not even a question.

        Is there still an enablement requirement for prior art?

        Sure, but it is met by actual reduction to practice.

        Next consider the thief who finds the formula for Coke in a locked safe in one of Coca-Cola’s buildings. He patents the formula. Is his patent invalid over the non enabled prior art Coke? How can litigators properly inquire into whether the inventor actually invented?

        As I’ve been saying for a while: The federal government cannot constitutionally issue a patent to a non-inventor, you don’t even have to get into the statutes. But in general if Coca-Cola wants to come forward and say that that this formula is what we’ve been selling, that later disclosure would meet the prior art, because you can use post-effective-filing-date references to show intrinsic qualities of the art cited.

        Further to the thief example, does it make any difference if the thief steals the invention from his fellow employee?

        No, why would it?

        What if the corporation files on it not knowing of the theft, and later finds out about it. What are their duties of disclosure?

        The same as any other prior art they’re aware of. There’s knowledge in the public sphere now that affects patentability.

        What if the corporation sues knowing of the bad inventorship. Can the infringer defend in any way?

        Nope. Though depending on the amount of time that has elapsed and what the corporation has done, the proper remedy is possibly cancellation of the patent instead of transfer of ownership, so I guess that matters.

        1. What if the corporation files on it not knowing of the theft, and later finds out about it. What are their duties of disclosure?

          I suppose I should point out this is something of a closer issue, since one could argue that 102(b)(1)(A) provides an exception, but I believe the proper duty (and certainly to be safe) is to raise the issue before the office and raise the exception to the office, because the office has a right to pass on the question. The fact that you might ultimately win the argument doesn’t change the fact that it is material to patentability.

        2. Random Guy, “Re: Is there still an enablement requirement for prior art?

          Sure, but it is met by actual reduction to practice.

          Huh?

          In the examples, the common factor is a non enabling disclosure. I think historically, the case law is consistent that such is not effective prior art except for obviousness purposes. So, your reply caught me off guard.

          Care to explain just a bit more?

          1. In the examples, the common factor is a non enabling disclosure. I think historically, the case law is consistent that such is not effective prior art except for obviousness purposes. So, your reply caught me off guard.

            I think historically the reason public use and sale were placed in 102(b) was to encourage prompt disclosure by time-limiting commercial exploitation. Your suggestion that the use or sale must necessarily be enabling is the exact opposite of that, as it would allow the inventor to commercially exploit his invention for an infinite amount of time so long as that invention was not reverse engineerable. There are plenty of cases where the public display is hidden or to people who wouldn’t understand how to make it and yet public use is found. Check the MPEP section on 102(b) for case cites.

            Regardless, to analogize it to the enablement of a publication cited as prior art (which I assume is what you’re doing when you say you have cases requiring enablement), the public use is clear evidence that one of ordinary skill could use (indeed even a lay person could use) and the fact that it’s in existence is evidence it can be made. This isn’t the constructive action of a filing of a claim, where enablement is presumed but uncertain, this is concrete evidence of enablement in the embodiment. In other words, if enablement is required for a public use or sale (and the test suggests it is not, the test is centered around commercial exploitation) then the actual reduction to practice must be sufficient to meet the enablement test for that particular machine.

            1. Random, I was not thinking at all about the personal bar aspects of the three cases. I am simply assuming there are three different non informing, non enabling prior public uses (by other than the applicant) that make the claimed invention otherwise available to the public.

              It just seems to me that there has to be a gloss on this — and that is that the prior public use must be enabling or else it no one else can make or use it.

              The patent goes to he who first enables the public to enjoy the benefits of the invention by explaining in the specification how to make and use the invention. This historically has been the law.

              Does it remain the law?

              1. I was not thinking at all about the personal bar aspects of the three cases.

                and that is that the prior public use must be enabling or else it no one else can make or use it.

                You need to though, because there’s different issues in play. The enablement requirement for prior art is so that we make sure someone else has actually invented the invention first, but the public use/sale bar is based upon ideals related to unjust enrichment. There is a specific reason why enablement may not be an issue for public use/sale.

                The patent goes to he who first enables the public to enjoy the benefits of the invention by explaining in the specification how to make and use the invention. This historically has been the law.

                That’s a true statement as to granting a patent, but you forget that a patent can also be forfeited.

                It has always been the law that once you sell a product for over a year, you lose your right to patent that product.

                1. equitable considerations are not made in a vacuum – and importantly here – when it is clear that Congress has considered the “equity” and STILL decided to make the law to allow for the separate protection of patents – after (and no matter how long after) – the different “protection” of trade secrets, then the Courts are not free to ignore such value decisions in their deliberation of what equity entails.

                  Those wishing to think that the AIA has not done what it plainly has done are clinging to fantasies.

          2. Another food for thought – under pre-AIA 102a, I don’t know of a cite off the top of my head where the supreme court actually held that the “knowledge by another” necessarily had to be “knowledge by the public”. You’re reading the test of the federal circuit, which the supreme court had struck down as being too rigid with respect to obviousness, over the plain words of the statute.

            Note the shift in language in post-AIA, which renders that interpretation impossible as it literally calls for information otherwise available “to the public.”

            1. Known or used means publicly known or used in the parlance of the law: Pennock v. Dialogue, 27 U.S. 1, 7 L. Ed. 327 (1829) link to scholar.google.com

              The distinctions the author makes are interesting but somewhat askew of the meaning of the statutes given them by the Supreme Court.

              1. This actually seems to help my argument, as they say “not known or used” cannot possibly mean by the inventor himself (that is overly part of pre-AIA 102(a) now).

                Then the court goes on to say that it cannot mean by people he employs, nor does it mean by people who derive (pirate) the invention from him. Rather it is by the public.

                It seems like that statement means that the “by another” is someone not connected to the inventor applying for application . The language of that case is entirely consistent with the interpretation that a single person who is not the applicant, who can prove he holds the invention before the applicant could use 102(a) to defeat the claim. Perhaps I’m wrong though, I would have to see the Congressional record when they amended 102 to add the by another language.

              2. somewhat askew of the meaning of the statutes given them by the Supreme Court.

                New law Ned – with new meanings as given by Congress rather moot the old interpretations of the old law (old law which is no longer there).

                You are attempting to bootstrap an interpretation of the old law into the new law, when the record is clear that the new law means something else.

                You do have a habit of doing this whenever the old ways are more in line with Ned-IMHO-Law.

    2. For the hose, you do realize that “the invention” depends on what is claimed, right?

      Let’s take a more mundane – but as sure as you are aware, living in California, a much more vital item: water.

      Clearly no one can invent water.

      But I can invent a new method of desalination.

      Connect the dots…

      1. A thief cannot obtain a patent as he has committed fraud on the Office.

        Honest question here to drill down:

        Thief steals a document detailing invention A. Thief submits to the office invention B, which in truth is an obvious variant of A. Thief doesn’t know whether B is in fact obvious or not, he just knows that B isn’t A. Has Thief committed a fraud on the office by submitting B? Is Thief an inventor of B? Is stolen document detailing A prior art given that it was a secret? Is Thief required to disclose A? Is Thief granted a patent on B?

        Hypo 2: Same questions as above, but instead of the document detailing A being stolen by Thief, it is considered worthless by the owner and thrown in the trash where it is found by Looter. Looter submits invention B, which is in truth obvious over discarded document describing A.

        1. Random, same question, but this variant:

          Applicant learns of A from a fellow employee, discloses B to company and company files on B.

          With minor variations, these are the facts in OddzOn products which was intended to be overturned. But is the thief truly an inventor?

          If B is an obvious variant of A, let’s say, the novel computer with a cover where A has no cover, I would suggest that B is not an inventor within the meaning of the patent law.

          Where does that leave us?

        2. “A. Has Thief committed a fraud on the office by submitting B? Is Thief an inventor of B? ”

          A. Doesn’t sound like it, not on the facts given. He might be though if A is prior art and he didn’t submit it.

          B. Yes.

          C. Doesn’t sound like it absent some extenuating circumstance.

          D. Doesn’t sound like it absent some extenuating circumstance.

          E. He might be, that’s going to depend on a lot of things.

          2nd hypo may depend on a great many facts not given.

          1. OK, 6, employee learns of invention of his fellow and files on an obvious variant.

            Cite the provision of 102 where the invention of his fellow employee is prior art?

            Struggling? Used to be there, but it was repealed. Name the statute repealed.

    3. Is Coke prior art despite that no one knows how to make it?

      Just a friendly reminder that the Coke formula has changed over time and has been successfully duplicated (at least in terms of its flavor) for many years.

      Coke is a story of repeated successful advertising of a sugary drink to successive generations of young people who prefer sugary drinks, and who then become familiar with the flavor. But Coke’s particular spin on the cola flavor has little or nothing to do with their market share today.

      Next consider the thief who finds the formula for Coke in a locked safe in one of Coca-Cola’s buildings. He patents the formula.

      And then what?

      1. “And then what” is a very good question.

        Kind of reminds me the recent case involving the owner of a drug company who was trying to figure out the method his competitor used to make a particular drug in order that he might sue that competitor. So long as he did so above the board, it seems that the law would have allowed him to bring suit against his competitor and win.

        Now assume that this owner, instead of entirely using independent means to determine what his competitor was doing, employed some espionage. Would that make any difference under the new law with respect to validity?

    4. Why are these situations [other than, obviously, the last one] any different under the AIA?
      A true “public use” will have the same bar effect.
      The sale of a product is stilla bar to anyting in the sold product.
      The non-statutory and purely personal bar of the “Metalizing Engineering doctrine” for longstanding commerical use of secret processess [that are NOT IN the sold product nor detectable from that product] was NOT expressly overuled by the AIA statute itself, just protected from patent suits by later patentees. Althougth some folks would twist some lay Congressional folks floor comments. See the article cited in comment No. 1 here for much more details on this issue. The most logical answer is no change here either. [The idea of the Sup. Ct. supporting someone commercially using a process for 20 years with trade secret protection and then filing and getting a patent on it for yet another 20 years of patent protection defies credulity in view of the Courts prior statements on that subject [see the cited article] and their current attitudes towards patents in general.]

  5. I think there should be a clear distinction between “knowable” as meaning physical discoverability of existing nonpublic knowledge versus mental discoverability of previously non-existing knowledge. If I understand the point about trade secrets correctly, then the “knowable” applies to pre-existing information which is readily discoverable.

    So the “knowable” aspect of “available to the public” could include things like an invention at a trade show where only the hood of a car was covering the invention and which anyone in fact could have opened and had a peek at the invention, but would not include anything at all related to mentally putting two and two together to then come to know the invention.

    1. I would agree with the second paragraph, but not necessarily the first?
      ——–
      Even under old 102 the CCPA and the Fed. Cir. have taken a very liberal view of how little publicly known OR publicly accessable a prior “publication” needed to be. E.g., in at least two decisions, a single indexed copy of a single thesis in a foriegn language only in one small foreign library.

      1. Interesting. Is there a distinction or subtlety between the two paragraphs I am unaware of?

        I only originally raised the issue because a number of my colleagues are interested in Philosophy, i.e. epistemology, and the term “knowable” (as distinct from the term “known”) is by definition applicable to things which are actually unknown but capable of being known…

        I fear the “unknown” especially if it is also “undefined”…

  6. For a more detailed discussion of this issue see “The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act,” 2011 Patently-O Patent Law Review 29, previously published on this blog.
    As Bob Artmitage and others have noted in other publications, these new 102 changes were deliberate, intending to exclude secret prior art, and in particular the clause “otherwise available to the public” was intended to be all-inclusive, in spite of Congress retaining in new 102 old 102 language that is now surplusage to that clause.

    1. P.S. Re your intial question, there is one case law created catagory of 102 “on sale” prior art that is narrowed in new AIA 102. Namely, prototype parts purchased under confidence from a supplier for development of a new product which is not yet public.
      [But, as you know, there are several far more common situations or events in which AIA 102 has expanded what is prior art, and greatly limited the prior grace period.]
      Furthermore, the really significant change in trade secrecy law is in the AIA’s greatly expanded prior commerical users protection statute, not in 102.

    2. Bob Artmitage and the drafters no doubt meant to sneak it in, but are there any congressional hearings or memos that discussed the change? If the the on-sale bar is thrown out, and with it the trade secret/patent election and prevent undue extension of market exclusivity, then I think Congress is going to have to make their intent a little more clear.

      A court is more likely to think interpret “or otherwise available to the public” to expand the interpretation of what is “sufficiently known to the public”, rather than a retraction of the on-sale bar.

      1. J,

        There was no “sneaking” here – this point was a very public point during the process.

        I know that I personally discussed this with my Congressional representatives.

    1. Seriously people,… the removal of “and the loss of right” directly speaks to the elimination of the loss of right for the inventor’s pre-filing actions (no penalty now for anything that is still “new to you” even if it was not new to the inventor).

      (sigh)

      In black and white: link to bitlaw.com

      1. (it is more than just a little credulous to say that some mousehole was involved, when the Fricken title of 102 announces the change….)

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