by Dennis Crouch
Helsinn v. Dr. Reddy’s and Teva (D.N.J. 2016)
The America Invents Act of 2011 (AIA) amended the definitions of prior art under 35 U.S.C. § 102 – up for grabs in this case is whether the changes included a narrowing of the ‘on-sale bar.’ Prior to the AIA, the ‘on sale’ bar blocked patenting of inventions that had been “on sale in this country.” Although not specific in the statute, courts interpreted the on-sale bar to include secret sales or offers-to-sell. These typically include closed-door business-to-business and custom sales rather than retail sales.[1] The AIA amended the statute in a number of ways – most pertinent here is addition of the ‘otherwise available to the public’ clause to Section 102(a)(1).[2] The provision now reads:
Novelty; Prior Art.—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 question in this case is how to interpret the statutory phrase “on sale, or otherwise available to the public.” The otherwise available to the public language suggests that the ‘on sale’ activity is also available to the public. That reading, however, conflicts with the history of the on sale bar. Which construction is correct?
The district court in Helsinn sided with the USPTO’s interpretation of the statute – that the AIA modified the definition of on-sale so that it now only includes publicly available sales activity. This allowed the patentee in the case to avoid an invalidity finding based upon its own prior sales of the patented drug. On appeal, Teva offers its set of arguments to retain the old-meaning:
- In ordinary usage, an item is “on sale” whether sold privately or publicly.
- Courts have treated “on sale” as a term of art for almost two centuries for sound policy reasons grounded in the Constitution.
- Congress did not change the settled meaning of “on sale” by adding the phrase “otherwise available to the public.”
- The district court’s reading of “on sale” would render meaningless the crucial word “public” in [102(b)(1)(B)].
- A Committee Report and floor statements of two senators cannot accomplish what they failed to accomplish in the statute itself.
- The PTO’s interpretation is not entitled to deference.
Professors Mark Lemley (Stanford) and Robert Merges (Berkeley) along with 39 other law professors have filed a brief in support of Teva’s arguments here – arguing that the new interpretation “would radically rewrite the law of prior art.”
The key legal question in the case is simple: did Congress mean to sweep away scores of established cases under the 1952 Act even though it reenacted language unchanged since 1870, merely because it added the phrase “or otherwise available to the public” to the list of prior art categories in the new AIA section 102? We think not. We have three primary reasons. First, the district court’s reading is inconsistent with the language and structure of the AIA. Second, it is inconsistent with Congressional intent in readopting the “on sale” and “public use” language in section 102. Finally, it would sweep away scores of cases decided over two centuries and radically rewrite a host of patent doctrines.
[TevaProfAmicusBrief] Moving forward, Helsinn’s responsive brief will be due April 21.
Of course, the issues here have been substantially debated already with commentators coming out on both sides of the debate:
- Paul Morgan, The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act, 2011 Patently-O Patent Law Journal 29.
- Joseph Matal, A Guide to the Legislative History of the America Invents Act: Part I of II, 21 Fed Cir BJ 435 (2011-2012).
- Dmitri Karshted, Did Learned Hand Get it Wrong?: The Questionable Patent Forfeiture Rule of Metallizing Engineering, 57 Vill. L. Rev. 261 (2012).
- Stephen Elkind, Secrets, Secrets Are No Fun! Balancing Patent Law & Trade Secret Law Under the America Invents Act, 22 Fed. Cir. B.J. 431 (2012) (no secret prior art).
- Robert P. Merges, Priority and Novelty Under the AIA, 27 Berkeley Tech. L.J. 1023 (2012).
- Daniel Taskalos, Metallizing Engineering’s Forfeiture Doctrine After the America Invents Act, 16 Stan. Tech. L. Rev. 657 (2013).
- Mark A. Lemley, Does Public Use Mean the Same Thing It Did Last Year?, 93 Tex. L. Rev. 1119, 1129-30 (2014).
= = = = =
AIA expanded the scope of prior art in a number of ways. This is one area, however, where it potentially shrunk the body of potential prior art. Innovative entities with a robust business involving private-transactions and those who rely upon third-party manufacturers are the most likely to benefit by a changed-law.
An important policy question (that could also influence is the construction) is whether eliminating secret sales as prior art would actually allow an innovator secretly commercialize its patent for years and then subsequently obtaining patent rights.
= = = = = =
[1] The Federal Circuit has also include a manufacture-supply agreement. (E.g., a supplier seeking for to manufacture and supply your custom inventory). This issue is currently being reconsidered by the Federal Circuit in the en banc case of Medicines Co. v. Hospira.
[2] The statute also eliminating the ‘in this country’ limitation for on-sale prior art and limited the one-year grace period associated with the on sale bar.
A (slightly different) line of thought, re: “An important policy question (that could also influence is the construction) is whether eliminating secret sales as prior art would actually allow an innovator secretly commercialize its patent for years and then subsequently obtaining patent rights.”
How does the sui generis “Rights**” of Prior User Rights (“PUR”) impact the policy under consideration?
**quotation marks around “rights” as these are actually a defense and not to be confused with a patent right itself.
If one thinks about the “policy” involved with the (somewhat) new creation of protecting things expressly not shared – and whose existence would come to light only when someone with a patent right tries to enforce that (presumptively) valid patent right – one has to consider that Congress has indicated its policy view that not sharing falls in line with the patent mandate.
If one can have protections when NEVER sharing, why in the world would protection be denied at whatever point it is decided TO share? The person so waiting still runs the risk of not being able to obtain a patent and the underlying theory that a patent right (according to all other aspects of patent law) can be said to be earned still means that the Quid Pro Quo has been satisfactorily reached.
Granted, I find the entire concept of PUR to be repulsive, but if one it going to accept that concept as indicating the will and due policy considerations of Congress, then the full impact of such “considerations” necessarily bleeds through to the current topic.
“The key legal question in the case is simple: did Congress mean to sweep away scores of established cases under the 1952 Act even though it reenacted language unchanged since 1870, merely because it added the phrase “or otherwise available to the public” to the list of prior art categories in the new AIA section 102?”
I F’in hope so. The interpretation over the last two decades has been ridiculous.
To be clear, the interpretation of the on-sale bar by the end of the 20th century was simply a landmine and had no real basis in sound policy.
As I note below, the changes to 102 included the change in title.
No one has provided one credible reason for a change in title that supports the scrambling attempts to make that very title change not only meaningless, but contradictory.
Does Garland have a record on 101?
It is hard to imagine anyone in the judiciary of the USA is anything but an ego maniac that believes he is just the smartest little boy on the block and has been put on the SCOTUS to make laws for us peons. Particularly anything that comes from Obama (aka, the Google stooge.)
Les: Does Garland have a record on 101?
He’s on the record as stating that the term “process” as used in section 101 unequivocably includes all method claims, including methods carried out purely in the human mind. He says he would have decided Prometheus in favor of the patentee and he wrote in a 2015 article that Alice is a quintessential example of the Supreme Court unconstitutionally rewriting the law to favor multinational corporate interests.
He also sh$ts golden eggs.
In response to flaky “Congressional Record” or “Congressional intent” arguments, the Metallizing Engineering equitable forfeiture doctrine is so rarely invoked that even many patent attorneys are not aware of it [or confuse it with a statutory on-sale bar]. Thus it is absurd to assume that the non-patent-attorney members of Congress passing the AIA statute were even thinking about that equitable doctrine much less deliberately intending to overrule it.
There is not the slightest indication, nor is it credible, that Congress intended to overrule the Metallizing Engineering doctrine to allow someone to commercially practice a secret process for an endless number of years [with trade secret law protection] and then after all that time still be able to file for and obtain patent protection for another 20 or more years.
Your claim of “it’s absurd” is itself absurd.
Thanks, Paul. I was wondering if there was anything in the Congressional record to support Helsinn’s position. It seems like the answer is “there’s nothing.”
MM I have no idea what Helsinn’s position will be on appeal to the Fed. Cir. I do not see how the Metallizing Engineering equitable forfeiture doctrine was, or needs to be, properly invoked in this case. It seems to me that the relevant issue in this case is only whether or not the AIA removed secret on-sales as 102 prior art, and as to that there seems to be debatable-applicability Congressional record remarks.
[P.S. J. Scalia may be dead but his judicial criticisms of interpreting statutes by reference to Congressional record remarks, especially by individual members, live on.]
the relevant issue in this case is only whether or not the AIA removed secret on-sales as 102 prior art
Paul, do you have an opinion as to the scope of what would remain if the “secret” sales are removed?
Would entities engaging in a sale without a confidentiality agreement attached to the sale need to publish the details of the sale for that sale to be deemed “non-secret”? Or is such a sale (i.e., one without a confidentiality agreement) deemed “available to the public” even if nobody other than the two parties (the seller and buyer) knows about it?
I have not speculated on that. But if normal trade secret law was applied, would not the secrecy end as soon as the invention is published OR a product disclosing the trade secret is left unprotected, that is, left open to unrestricted inspection by any member of the public, irrespective of confidentiality agreements or their violation by a party that was supposed to be maintaining their secrecy?
Paul: if normal trade secret law was applied, would not the secrecy end as soon as the invention is published OR a product disclosing the trade secret is left unprotected, that is, left open to unrestricted inspection by any member of the public, irrespective of confidentiality agreements
I would assume so.
I’m thinking of a scenario, however, where (1) there is no confidentiality agreement but also (2) no knowledge of the sale outside of the two parties (because the innovation is used internally) until, of course, the sale is discovered/revealed in the course of litigation or some other attempt to invalidate the patent.
The primary rational for the prior court interpretations of the on sale bar to encompass secret sales was a desire to prevent a patentee from extending the length of their patent right beyond the statutory period. This was made possible under the pre-AIA law because the first inventor always or almost always would have superior rights as against any subsequent inventor who was first to file. The AIA prevents this scenario from occurring by giving the first inventor to file superior rights to the patent. If you believe simultaneous invention is the norm rather than the exception secret sales do not provide the same level of problems as they did under the pre-AIA system. Therefore, it seems to me that the structural changes inherent in the AIA remove the strong policy rational for having secret sales count as prior art.
“We think, then, the true meaning must be, not known or used by the public, before the application. And, thus construed, there is much reason for the limitation [regarding limited times] thus imposed by the act. While one great object was, by holding out a reasonable reward to inventors, and giving them an exclusive right to their inventions for a limited period, to stimulate the efforts of genius; the main object was “to promote the progress of science and useful arts;” and this could be done best, by giving the public at large a right to make, construct, use, and vend the thing invented, at as early a period as possible; having a due regard to the rights of the inventor. 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.
Pennock v. Dialogue at 19.
At the time of Pennock, the Court did not have a clear understanding of a process patent, i.e., a patent on a method of making something. But the principle here is the same when the process is secret but the product is sold publicly. There is a bar from the date of the sale of the product to the public. To allow otherwise would extend the period of monopoly where the public is not free to practice the invention.
I don’t think this has anthing to do with rival inventors.
Ned,
First the “process patent” as you call it is NOT limited to a process of making something (your error in making that category into a sub-category of the hard goods categories).
Second, the SECOND someone engages in having that patent, they lose the protection that THE PATENT provides.
Have a patent on an item? Sell the item and lose the protection.
Have a patent on the item, but have a trade secret on the particular process? You are in error to mix the item patent on the non-patent process.
As I mentioned below – there is a VERY easy way to maintain focus here.
Prof. Crouch,
You do realize that every time you employ your selective editing, you are weakening your “protection” against turning over poster identities, right?
Not to mention your credibility joining those whom you “protect” with your edits.
I have to wonder: Who is pulling your strings? Why the “secrets?”
I have it on good authority that Prof. Crouch is part of the shadow lizard government too.
That may or may not be, but it is beyond odd to think that the selective editing will do anything except reinforce the perception that this blog lacks a critical objective stance – something that may come into play if anyone (such as HoPB) seeks redress against another** (such as Malcolm), and the good professor is privy to Malcolm’s real identity.
Removing my objectively true (and even polite) comments as to such is like a tell tale heart.
**among other possible causes created by users of this blog.
I find the term “critical objective stance” on the Internet translates as “agrees wholeheartedly with my opinion because no reasonable person could think any other way.”
As to the identities of commenters on this blog, if you have a legitimate beef with anyone, there are courts for that. I don’t think Prof. Crouch should narc on people just because you want to inflict some offline “justice” on them.
Wasn’t me that reached the level (read my post a little more closely).
You also missed that IF the court route is contemplated, the good professor likely WON’T have the option of NOT being “a narc,” based on his lack of objectivity.
The selective edits and closure of the previous thread won’t change that (and in fact, make it worse for him).
That’s kind of the point of the post above.
Yay ec(h)osystem !
I don’t quite know what you are going on about. It is well settled law that bloggers are protected by Section 230 of the CDA when they moderate comments on their blog. There is no obligation to be objective in their moderation.
That is just not correct – the “moderator” in those scenarios does NOT play a role in shaping the subjective content. Such actions place the “editor” as a contributor and removes the protection.
Your version is just a sham (and a shame)
Your misunderstanding of section 230 is plainly wrong. And it is intellectually dishonest to pretend otherwise. Your theory of “an editor shaping the subjective content” losing the protection of section 230 has no basis in law and you demean yourself to pretend otherwise.
No misunderstanding on my part.
See (for example): “You will not lose this immunity even if you edit the content, whether for accuracy or civility, so long as your edits do not materially alter the meaning of the original content. ” at link to dmlp.org
(we are also not talking about Prof. Crouch being liable for Malcolm’s actions – but that Prof. Crouch won’t be able to not hand over Malcolm’s identity if HoPB subpoenaed that information)
Your aim is a tad off.
Another good read for you:
link to huffingtonpost.com
Hah. You are really turning into Anon Quixote. Or maybe you are Anonhab. There are many ways to Prof. Crouch could motion to quash such a subpoena if he were so inclined. However, I am disinclined to rely on your word that anyone, this HoPB character included, has a meritous case about… well quite frankly, anything.
And your quote about section 230 reinforces my point. The “so long as your edits do not materially alter the meaning of the original content” means that you can’t alter a sentence like, “Anon did not shoot JFK” to be “Anon did shoot JFK.” There is nothing about subjectivity or objectivity.
Beside, subjectivity or objectivity of moderating a comment section is not relevant as to whether the good Professor would have to hand identifying information over in response to s subpoena. That is the source of my initial confusion as to why you think it would matter.
Your confusion remains good sir, as you clearly do not see the material effect of the selective editing. My helpful links do NOT reinforce your points (in fact they show you to be off target – just as I indicated).
As it stands, your “other motions” options remain vague and unsubstantiated. You can choose to “follow up” with something more substantive at your leisure, but your still need to come to grips with what is going on (which you have shown no inclinations as to doing).
The information to find out who MM is irl is already out there anon, why bother with all this? Not bright enough?
6, please read better – I was clear that it was not me looking for Malcolm’s real identity.
I just don’t give a rip who he is.
Try substantive responses rather than mere personal insults and your “comments” will not get filtered.
Your repose merits a grade of a big F. U need to pay attention as substantive and on point posts were removed as well.
I have distinguished my posts from “mere personal insults” – and while I fully admit to using ad hominem (since that is what I see enforced), my ad hominem is on point and pointed.
You may not like it, but hey, I am not here to “make you happy.”
“anon” Your repose merits a grade of a big F.
Smell the “substance”, folks! He’s a super serious person.
Come on Anon “a Big F U?”
I see at least four acts of prior sale. There are those which are secret but commercial, which act as a personal bar. There are those that are not commercial but, because they are non-secret, they are prejudicial to novelty. There are those easy cases in which the prior sales are both commercial and open, and there are those where the prior sales are both secret and non-commercial and thus made nothing of the invention” available” to any member of “the public”.
When it is possible to judge what is novel only after there has been discovery, no wonder 6, sitting in the USPTO and commanded to examine for novelty, is frustrated with the wording of Section 102 as amended by the AIA.
The interesting four-square created with the axis of “commercial” and “secret” has the tendency to misapprehend and to mistake the separateness of trade secret law (non-federal, at least to date) and patent law (expressly and pre-emptively federal).
Even great judges of past made this mistake.
The picture is a lot more clear if one can keep focused on the differences and not get clouded by thinking that any amount of “protection time” under trade secrets impacts “protection time” under patents.
Good analysis Max, but misses one more important additional factor: whether or not the product offered for sale or sold [either secretly or publicly] contains what is being patented or discloses what is being patented. That is essential for an “on sale” statutory prior art bar, and distinguishes it from the Metallizing Engineering equitable forfeiture doctrine.
Perhaps critical is the understanding (and distinction) between merely “containing” and “disclosing” in a manner fit to merit the designation of “prior art.”
Something can very well be “contained” but NOT satisfy a “disclosure” meriting being called prior art.
Good point Paul. The underlying public policy reason for a personal bar is different from that which dictates that some acts of prior sale shall destroy patentable novelty.
Why should the State hand out a 20 year monopoly for subject matter that the public already has. The good patent gives the public some teaching it never had before, while the bad patent deprives the public of something it had already acquired.
The personal bar is there for a different reason, nothing to do with disseminating technical knowledge as soon as possible. It is to discourage Inventors from having their cake and eating it too.
Can the courts grasp that distinction. One hopes so, even if it is all too highfalutin’ for the Congress.
You presume that this was TOO high falutin for Congress, when the words of Congress directly say otherwise.
The level of effort to NOT understand is tremendous.
Meh, I’m not that worried about on-sale stuff. In my art my dudes don’t tend to be selling these things immediately it doesn’t seem. Or else they’re keeping even those sales secret.
I’ve spoken on this case before so I will just say this now:
KSR stated what is only common sense – the most common sense things are not written down. The example I like to give is when you walk into a restaurant that takes reservations and ask how long the wait will be, the hostess looks over the restaurant and performs a method. The method utilizes variables like what the party size is, what the reservations are, what tables are available, what tables are being cleaned, what tables are likely to finish up soon, etc. This method is run and then a result is generated. You’re hard pressed to find a publication of this method, but it is ubiquitous.
That is one example, there are others. The first time a patent comes up where everyone knows something has been within the public purview but it doesn’t fit within the boxes of 102 (whether the federal circuit has construed those boxes as small or large) there is going to be a rather massive issue because the court will come to the conclusion the patent must fall. It will be a results-based inquiry. If the court has to resort to the Constitution to remove the patent they will, whether that means reinterpreting this interpretation, or creating a 102 judicial exception, or striking 102 all together.
The court has already said that novelty is a constitutional requirement. If Congress were to remove 102/103 as a grounds of invalidation altogether the court would reinsert a form of it. If Congress enacts a 102 that is insufficiently strong (as this interpretation of the law *may* prove to be) the court will strengthen it. Congress lacks the power under the patent clause to secure rights that do not promote the progress of the sciences.
The thing you seem to be missing is that it is EXPRESSLY not up to the Court to write that law (or re-write it, or “interpret it” into being).
The Court cannot violate the Constitution in order to correct what it sees as a Constitutional violation.
You are correct. If the Court finds a constitutional defect in the patent act, their only course of action is to invalidate the patent act.
A comment on the particular nature of the AIA and its express rejection of separability has vanished.
Still being blocked…
The AIA contains that “all or nothing,” “too big to F A 1 L,” chaeb0l-like express rejection of severabi1ity.
Something that NO ONE has put forth a cogent legal argument to overcome.
(that is objective fact for which I am open to be corrected)
The court does not always honor severability. That came up during oral argument of the recent texas abortion cases.
The Court cannot rewrite legislation that has directly considered and rejected separability.
Period.
The Court cannot violate the Constitution in order to correct what it sees as a Constitutional violation.
Well here the court could overrule the interpretation of the language by the lower court. Teva’s relief is not unconstitutional relief, but I agree if they conclude the Congress intended to cut out necessary prior art a judicial exception is not proper and they would have to find the scheme unconstitutional.
“Teva’s relief is not unconstitutional relief,”
Not sure on its face – but I would have to read their brief in more detail to say yay or nay.
That was a good example of prior art rarely applied in PTO proceedings [not even allowed in an IPR] but it does actually fit under 102 and is applied in patent litigation as prior art – as a 102 “public use.”
Possibly public use. The use of the method is hidden, and it’s unclear (based upon the new interpretation of 102) whether it would fit under public use, i.e. if the rule sweeps away secret sales, there’s no reason to suggest it hasn’t swept away public uses where the inventive mechanism is hidden. Though I agree it probably would be public use.
But it was only an example – if a youtube video covered content widely known and the only way to invalidate something was to cite the youtube video, the only conclusion that can occur is that the youtube video is prior art, even if it isn’t a prior publication. The court can’t allow Congress to issue a patent to truly previously known subject matter.
Why would a publicly available, searchable, U-tube video not be a 102 publication, assuming its posting date can be proven to be prior to the filing date of the subject patent? Even for for pre-AIA applications, there is at least one CAFC decision holding an internet post to be prior art: Voter Verified, Inc. v. Premier Election Solutions, Inc., Nos. 2011-1553, 2012-1017 (Fed. Cir. Nov. 5, 2012) By clearly holding an internet-searchable prior internet-only publication to be a “printed publication” under [non-AIA] 35 USC 102, it seems to me that any distinction in that respect between the present 102 “printed publication” and the upcoming AIA 102 “printed publication .. or otherwise available to the public” has been removed?
Voter verified just says that website text can be a printed publication like physical text, but those are still documents. For example, in Massachusetts Institute of Technology v. AB Fortia, 774 F. 2d 1104 the thing that made an open oral reading (to 50-500 people) of a paper a “printed publication” was not the reading, but the fact that a printed version of the speech had been disseminated (to 6 people). I simply don’t think either a video or an audio recording constitutes a printed publication absent the depictions being transcribed.
Of course, this was never a problem prior to this, because a disseminated video tripped the “knowledge” prong, a prong which no longer exists. My problem isn’t with the dissemination, which is clearly sufficient, its with whether the act qualifies under the prong at all.
So hypothetical: I invent, then I use the invented article in a “secret” manner (i.e. with only myself present in my house, for example) but I audio tape the act, and narrate what I am doing in a manner that, if heard, would enable the invention. I then disseminate the tape. I don’t think I’ve triggered public use (my use was secret), and I don’t think I’ve triggered printed publication because I have no printing. If the audio gets transcribed I still haven’t triggered printed publication (now there’s a printing, but no publication). When the transcription gets disseminated, now I’ve triggered prior art.
This is no different than if I invent and then I tell someone everything about my invention. I haven’t triggered anything because the only thing I have done is conveyed knowledge (no patent, no use, no sale, no printing) which is no longer prior art. That’s why the decision is de facto bunk – everyone knows me telling a member of the public what I did must trigger prior art, but not under this ruling.
If there were no novelty requirement, there would be requirement for invention.
The historical context of “requirement for invention” is wrapped up in the 1952 Act (Congress explicitly choosing NOT “invention” but rather the new 103 and obviousness.
“Congress lacks the power under the patent clause to secure rights that do not promote the progress of the sciences.”
You seem to be giving an awful lot of weight to a preamble that does not breath live and meaning into the body of the article.
There are plenty of laws that don’t promote domestic tranquility, but are instead very divisive (e.g., reproductive rights, gun control). Does that make them unconstitutional?
Except the court has specifically given weight to the clause, that’s the reason why the judicial exceptions exist for example.
Not quite right, Random.
The judicial exceptions exist because Congress in its early writings of patent law expressly shared its allocated authority with the courts to help set the meaning of the term “invention” by the legal writing t001 of common law evolution.
This was expressly taken away in the Act of 1952, wherein Congress – in direct opposition to the mess that the Court was making (in its anti-patent views) put in place – instead of “invention” – the notion of obviousness.
There is NO allocation in the Constitution for the Court to “give weight” as you so indicate. That is simply not what the Constitution does or allows. Patent law is statutory law and the ONLY way for the courts to properly “write” law is by leave and direction of the branch of the government allocated authority to control statutory law (and there is plenty of con law that is directed at the proper levels of such).
You are getting con law wrong as well as getting statutory law wrong as well as getting patent law wrong.
Re one side of this argument, Bob Armitage and others had expressed their intent during its drafting for the AIA to end “secret prior art.” That is, the kind of unknowable prior art that, when sprung later, can be highly disruptive of patent ownership and existing businesses. Thus, the AIA added 102 catch-all “or otherwise available to the public” should logically be read in the context of its combination with the other AIA 102 amendments eliminating secret prior art, in particular the elimination of 102(g) and 102(f).
BTW, the sentence construction awkwardness of the end-tacked “or otherwise available to the public” was reportedly due to the desire to retain as much as possible of the original 102 language.
P.S. That late AIA drafting compromise pales in comparison to another – the bizarre retaining of the “best mode” requirement in 112 while elsewhere in the AIA making it judicially enforceable.
Paul, this makes a lot of sense. “Known” has was not previously in 102(b). But known was in the statutory framework in both England and the US since 1624, most recently, in 102(a). It would be odd not to include in the statutes going forward.
P.S. to avoid confusion with 102 “on sale”prior art from products containing the invention, note that the Fed. Cir. has made it clear that the Metallizing Engineering doctrine is purely personal forfeiture precluding getting a valid patent on a secret manufacturing process commercially used for too long before filing on it, and NOT “prior art” of any kind.
Paul, salient point, this: “Not prior art of any kind.”
That is why the inclusion of “on sale” within the 103 reference should never have happened.
The drafters of ’52 should have made it perfectly clear that “prior art” for 103 purposes was defined by 102(a) alone. I think that is what Federico understood it to mean when he was drafting the statute. But I am not sure Rich ever understood it that way.
This issue went to the Supreme Court at one point where the Court gave it short shrift. But the issue was and is a serious one.
It is sad, very sad, that the drafters of the AIA, once again, muddied the issue by putting “on sale” in 102, and then referred to the 102 in 103 as if everything in 102 defined prior art.
We really, really should have been better served by the drafters of the AIA who could have fixed these ambiguities by careful drafting. They blew it.
Ned’s remark to Paul F. Morgan of
“ Paul, salient point, this: “Not prior art of any kind.”
is “salient” – but NOT for what Ned and Paul
(“ Fed. Cir. has made it clear that the Metallizing Engineering doctrine is purely personal forfeiture precluding getting a valid patent on a secret manufacturing process commercially used for too long before filing on it, and NOT “prior art” of any kind” )
are portraying this to be.
Point blank, Congress had earlier acted to “codify” by making certain personal forfeitures have the same effect – and to be legally treated as – prior art.
It is beyond clear – and much opposite of the self-serving “flights of fancy” accusation that Paul launched elsewhere – that Congress purposefully changed the way that personal forfeitures were to be handled henceforth in the AIA.
While not dispositive in itself (as headings are “just headings”) the fact of the matter (in conjunction with the soliloquy and other items) is that the heading of the NEW Section 102 deliberately deleted the phrase “loss of right to patent”
Compare and contrast the following:
Pre AIA:
35 U.S. Code § 102 – Conditions for patentability; novelty and loss of right to patent.
Post AIA:
35 U.S. Code § 102 – Conditions for patentability; novelty
Neither Paul nor anyone else has bothered explaining why Congress would take this move if they were NOT so removing personal forfeitures. A mere “shifting” of words (but somehow ignoring the Soliloquy) just does not explain the act of changing the heading. Congress could have easily – and in truth would have needed to NOT – change the heading if they desired no change in what lies underneath the heading.
anon, good points, but consistent with the fact that I do not believe that Congress intended any change in the law regarding ON SALE by the new statute, but may have inadvertently made a change to the extent the new statute is not word for word the old.