By Jason Rantanen
As part of my standard preparation for teaching a given doctrine in my patent law class, I like to review the relevant section of the Manual of Patent Examination and Procedure (MPEP). The MPEP typically offers a relatively well-organized description of the doctrine, with critical cases referenced. But my review leaves me frustrated almost every time.
The reason for my frustration is that the MPEP, while doing a terrific job with legal issues on which there is clear precedent, frequently elides over the doctrinal fractures and fault lines that are at the heart of contemporary patent law disputes. Or worse, it simply does not acknowledge their existence at all. The result is a resource that, in presenting patent law as clear and determinate on its face, masks the existence of sharp tensions and breakpoints in patent law.
For example, today I’ll be covering § 102 “public use” and “on sale.” A glance through the MPEP’s sections on public use under the First-to-File regieme reveals a landscape that seems dry and barren, with the only major feature being the question of whether pre- or post-AIA § 102 applies. From reading MPEP § 2152, one gets the sense that post-AIA, the only issue once the question of regime is resolved is whether the activity was “accessible to the public.” Secret sales or offers for sale, for example, do not place the invention “on sale”:
“AIA 35 U.S.C. 102(a)(1) does not cover secret sales does not cover secret sales or offers for sale. For example, an activity (such as a sale, offer for sale, or other commercial activity) is secret (non-public) if it is among individuals having an obligation of confidentiality to the inventor.”
MPEP § 2152.02(d). Experimental use has been entirely dropped from the MPEP’s discussions of post-AIA public uses and sales. It’s as if it never existed.
Yet, these are far from resolved issues. There are plausible arguments that Congress legislatively changed the meaning of “public use” through the AIA; there are at least equally plausible arguments that Congress did not. The PTO’s position on secret commercial activity is on even weaker footing. Inevitably, the Federal Circuit, and likely the Supreme Court, will weigh in on this issue of statutory construction. But the MPEP’s characterization of this issue as settled hides a very real tension in patent law, one that will really matter to inventors and patent attorneys. It’s not difficult to imagine a hypothetical situation in which someone relies on the MPEP’s language about secret commercial activity not constituting sales for purposes of § 102(a)(1), only to be placed in a very bad position should the Federal Circuit or Supreme Court conclude otherwise.
These issues are only the most obvious fault lines hidden under the MPEP’s seemingly solid description of patent law doctrine. But there are others, and creative, knowledgeable attorneys likely know many of them already. One that has always fascinated me is the question of what constitutes a “use” for purposes of § 102 “public use.” The casebook I use for patent law, Craig Nard’s The Law of Patents, does a good job of setting up this issue through Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376 (Fed. Cir. 2007). The issue is whether just showing, or perhaps even demonstrating, an embodiment of the invention constitutes a public use. Motionless Keyboard suggests that sometimes not, at least if the invention is not used for its intended purpose. But in other cases, the Federal Circuit brushes aside the “intended purpose” language of Motionless Keyboard. See, e.g. Pronova Biopharma Norge AS v. Teva Pharmaceuticals USA, Inc., 549 Fed. Appx. 934, 939-943 (Fed. Cir. 2013) (nonprecedential). This question of what constitutes a use is a substantial fracture point where the law is indeterminate, but one gets no hint of this potential tension from the MPEP. See § 2133, 2152. Other fracture points and fault lines are apparent if one digs into the recent cases: the question of what constitutes an offer for sale versus an assignment or license is another fracture point within the § 102 space on which disputes ultimately get resolved, See, e.g. Elan Corp. v. Andrx Pharmaceuticals, Inc., 366 F.3d 1336 (Fed. Cir. 2004), but which one gets no hint of from the MPEP. Likewise, while there is an extensive discussion in the MPEP of whether an invention is “ready for patenting,” see § 2133.03(c), there is no discussion about a fundamental important question: what is the invention for purposes of a product claim? Is it just an embodiment of the invention or is it the technical know-how (i.e.: what we usually think of as “the invention” when talking about patents)?
My point is not that the MPEP should definitely include extensive discussions of fault lines and fracture points within the caselaw. Indeed, the MPEP isn’t much worse than most treatises, which similarly elide or ignore all but the most well-recognized tension points in the law. And “on sale” and “public use” issues, which typically involve information within the inventors’ own possession rather than information that is easily found by the examiner, are perhaps not the most efficient places for the MPEP to offer substantial guidance. Whether or not the MPEP would benefit from greater detail is a normative question that I’d be curious to hear folks’ thoughts on. I do note, though, that on some issues, such as experimental use prior to the AIA, the MPEP goes into substantial detail already, so it’s treatment is more inconsistent than uniformly thin.
My point is simply that the MPEP’s presentation of patent law doctrine inherently implies a patent law that is far more determinate and clear than it really is. There are hard questions in patent law, but reading the MPEP gives the impression that they are just complicated questions with definite answers. The caselaw suggests otherwise.