Helsinn: Post-AIA Public Sales are Prior Art Even Without Disclosing the Invention

Helsinn v. Teva (Fed. Cir. 2017) [HelsinnDecision]

In an important decision, a Federal Circuit has interpreted the post-AIA on-sale bar of 35 U.S.C. § 102 to include sales made available to the public (i.e., noticed in an SEC filing), even if the published portion does not fully disclose the invention.

[Post-AIA On sale bar attaches] if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of sale.

The court here refused to particularly decide whether truly secret sales still qualify as prior art under Section 102, but (in my view), appears to strongly suggest that the on sale bar will continue to apply in the truly secret cases as well.

The AIA did not directly change the pre-AIA “on sale” language, but did linguistically suggest that only public offers for sale should be considered as prior art.  This change from prior law comes from the rewritten Section 102 that bars patentability of an invention that “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.” 35 U.S.C. § 102(a)(1).  Here, the linguistic argument is that the “otherwise available to the public” clause limits on-sale activity to those that are also available to the public.  This is the interpretation taken by the USPTO.  However, the PTO’s interpretation is given no deference by the Federal Circuit.  And, although some congressional history supports the change, the linguistic argument is not strong (in my opinion).

In the present case, the pre-filing sale was actually publicly announced in an SEC filing, and that filing included a redacted version of the contract.  According to the court, the disclosed agreement included “all the pertinent details of the transaction other than the price and dosage levels.”  Although the dosage levels were a key element of the claimed invention, the Federal Circuit ruled that the sale nonetheless created prior art:

Requiring such disclosure as a condition of the on-sale bar would work a foundational change in the theory of the statutory on-sale bar. Indeed, the seminal Supreme Court decision in Pennock addressed exactly such a situation— the public sale of an item but the withholding from “the public the secrets of [the] invention.” Pennock v. Dialogue, 27 U.S. (2 Pet.) 1, 19 (1829). Failing to find such a sale invalidating, said the Court, “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.” Id.
It will be interesting to see how this develops moving forward.  PTO needs to immediately change its rules, and some prosecutors will need to start disclosing again.
Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

76 thoughts on “Helsinn: Post-AIA Public Sales are Prior Art Even Without Disclosing the Invention

  1. Very important case, but is there a way you can correct the title of this article? “Heslinn” should be “Helsinn.” The web address also has the wrong name.

  2. If a non-disclosing offer for sale or sale before the effective filing date is prior art under AIA 102(a)(1), then is it an absolute bar to patentability? The 102(b)(1) exception only applies to disclosures. It would seem either a non-disclosing offer for sale or sale is a disclosure, which does not make linguistic sense, or a non-disclosing offer for sale or sale is an absolute bar to patentability, which does not make practical sense.

    1. Well if they’re going to construe the AIA language so as to preserve the old rule about sales, then it seems only fair to do so for the grace period as well.

      And regarding invoking congressional intent, courts can’t have it both ways: Either Congress intended to change the on-sale rule and hence the grace period could just apply to “disclosures” (in a narrow sense) without much consequence; or, Congress didn’t intend to change the on-sale rule (despite at least the superficial text) in which case they also didn’t intend to change the grace period (likewise despite at least the superficial text). To the extent anyone argues intent anyway, *nobody* argues that the intent was to keep the old rule on sales but not for the grace period. (And if congressional intent is to be disregarded in favor of plain text, then any argument for preserving the old on-sale rule would go out the window in any event.)

      Anyway, in the end, the court here was very clear that in their understanding the grace period still applies.

  3. This case should not overrule the longstanding precedent that secret, commercial use, of an invention by

    THIRD PARTIES

    is not prior art.

    No on sale.

    No public use.

    No basis for prior art at all.

  4. One interesting takeaway: the Helsinn decision doesn’t seem to view Metallizing as a “sale” case.

    1. Helsinn is a statutory “on sale” case, not a Metallizng Engineering case.

      The two are very different. An on sale bar operates against the world. A Metalizing Engineering secret commercial use bar operates only against that single party. The “on sale” bar is statutory. Metalizing Engineering is non-statutory, pure common law.

      1. Thanks Dave, I have been hoping to get Metalizing Engineering and Fed. Cir. decisions thereon better understood by folks here for years, including in a detailed article published on this blog on unclear issues after the enactment of the AIA. However, since the Metalizing Engineering decision was a personal “forfeiture” from a delayed application filing isn’t that equitable rather than common law? [However, I hope that does not stir up more long citations of conflicting ancient English decisions in odd ancient English courts.]

        1. I’m using “common lasw” in its most common sense, as contrast to legislative statute and executive reegulation (when being contrasted to equity, the term is almost always “law” not “common law” )

      2. David, do you agree or disagree that On Sale and Public Use were added into the statute in 1836 to codify Pennock v. Dialogue?

        Section 6 of that Act read,

        “SECTION 6. And be it further enacted, That any person or persons, having discovered or invented any new and useful art, machine, manufacture, or composition of matter … not known or used by others before his or their discovery or invention thereof, and not, at the time of his application for a patent, in public use or on sale, with his consent or allowance, as the inventor or discoverer….”

        1. Ned —

          I think its a silly waste of time dancing on heads of 19th century pins. By 2010, the law was well established, and it’s not all that interesting to lmicro dissect the history of how it got there. All that really matters is how pre-2010 precedent gets re-applied oR not re-applied to the AIA.

          1. Well David, I think one has to clearly understand that different principles are involved with on sale and public use. The one is designed to prevent commercial exploitation of invention prior to filing a patent application (with a one-year grace period). The other is designed to prevent withdrawal from the public domain things that are in the public domain.

            Thus cases that pertain to the one policy should not automatically apply where the other policy is implicated.

            That is why I think the Federal Circuit has consistently held that on sale by third parties not amounting to a public use – disclosing the invention – is not prior art. See e.g., In re Caveney, 761 F.2d 671, 226 U.S.P.Q. 1 (Fed. Cir. 1985).

  5. This is an important case for parties who have disclosed agreements and licensing deals prior to filing patent apps describing subjects of those agreements/deals, even where those subjects are referred to in the agreements/deals in only the vaguest of terms.

    Can we expect this case to be the subject of an en banc rehearing request, at least?

    DC: The court here refused to particularly decide whether truly secret sales still qualify as prior art under Section 102, but (in my view), appears to strongly suggest that the on sale bar will continue to apply in the truly secret cases as well.

    Dennis, is there a particular passage (or passages) in this opinion that leads you to this conclusion? The strongest passage in support of this view would appear to be the dicta on page 21: “The floor statements do not identify any sale cases that would be overturned by the amendments [to 102(b)].” (emphasis in original).

    On a very technical level, that dicta is arguably accurate (if we assume the CAFC’s summary of the floor statements is correct). But the floor statements quoted by the CAFC just one page earlier in the opinion (!) flatly contradict the point that the CAFC obviously is trying to make (reminding again: this is all dicta). Specifically, the floor statements by Sens. Kyl and Leahy are crystal clear that the amendments to 102(b) were made, at least in part, to “do away with precedent” that “private” or “secret” “sale[s] or offer[s] for sale” which fail to disclose the invention to the public could represent patent-defeating art. Personally I’m not convinced the CAFC is ready to call a “truly secret” sale an on-sale bar.

    The big problem for the patentee in this case was that the patentee’s contract to sell the product (that was later patented) was publicized before the critical date. The patentee’s best counter-argument, I think, was that the specific dosage element of the claim was not publicly disclosed in the otherwise publicized agreement regarding the sale. The CAFC addresses this lack of disclosure in a manner that is not terribly compelling, even implying (in a footnote on page 26) that the element was somehow “inherently” disclosed by virtue of the agreement relating to the incompletely described product. To support its conclusion, the CAFC also collapses together cases involving fact patterns that are quite different from the facts of this particular case (e.g., the CAFC relies on cases where a product that “secretly” embodied the claim elements was actually commercialized and sold to the public and glosses over the policy differences — not to mention congressional testimony — that might suggest a different result where the agreed upon future sale of an undisclosed invention is publicized).

    If we take the reasoning of this case to the limit, it suggests that publicizing on date X the existence of an agreement between company A and B wherein B “agrees to buy every useful article that A makes” — with no other information provided — would represent an “on sale bar” destroying A’s right to patent anything that was “ready for patenting” at date X. Seems a bit extreme …

    1. On a very technical understanding, that dicta is highly inaccurate.

      But let’s pretend that Congress was not explicit that they were massively changing 102 in regards to prior art….

      (I do hope you at least enjoy that warm spot you have thrust your head into)

      1. On a very technical understanding, that dicta is highly inaccurate.

        I’m not sure what you mean, unless you’re loading up the term “understanding” with some of your magical innuendo (in which case nobody is sure what you mean).

        Here’s the CAFC’s summary:

        Senator Kyl explicitly referenced cases such as Egbert v. Lippman, 104 U.S. 333 (1881), Beachcombers International, Inc. v. Wildewood Creative Products, Inc., 31 F.3d 1154 (Fed. Cir. 1994), and JumpSport, Inc. v. Jumpking, Inc., Nos. 05–1182, 05–1196, 05–1197, 2006 WL 2034498 (Fed. Cir. July 21, 2006), and stated that “new section 102(a) precludes extreme results such as these.”

        Are those cases more accurately characterized as focused on the on-sale bar, or — as the CAFC alleges — on the public use bar?

    2. MM, 1. third party, secret use has never been “prior art.”

      2. To the extent that 1 is understood, then Kyl was referring to secret on sale by the inventor or his privies.

      3. But there is a counter-doctrine that legislation that is intended to overturn a Supreme Court case needs to be explicit on that point. The case Kyl and his brethren said they did not like was the corset case, Egbert v. Lippmann, 104 U.S. 333 (1881), where the patentee allowed non disclosing public use of his invention for 10 years prior to filing his patent application even while the invention went into broad public use. No sales were involved. The Congressional testimony never mentioned Pennock v. Dialogue, a case that involved the sale of hoses embodying the invention. The manufacturing techniques were kept secret. The Pennock Court raised constitutional concerns if the rule went in favor of long public sales of products embodying the invention being quite contrary to the promotion of the useful Arts. People would be rewarded for keeping their inventions secret until other began to discover them, allowing the secret user to file and obtain patents after long public use.

      Regardless, Kyl and his folks were greatly mislead about the nature of the holdings of the Supreme Court, and the nature of the law they were trying to do away with.

      Moreover, Dyk is clearly a very above-average jurist — way above average. Too bad he was not on my side in MCM Portfolio.

      1. That’s some serious “6-is-an-Einstein-because-he-agrees-with-me” affliction going on there Ned.

        By the by, the Hyper-Filter has been tripped – the narrative in several threads must not be going in the desired direction.

      2. This seems pretty explicit to me with respect to the “truly secret” sale issue:

        Leahy: [S]ubsection 102(a) was drafted in part to do away with precedent under current law that private offers for sale or private uses or secret processes practiced in the United States that result in a product or service that is then made public may be deemed patent-defeating prior art. That will no longer be the case.

        Kyl: [T]he current on-sale bar imposes penalties not demanded by any legitimate public interest. There is no reason to fear ‘commercialization’ that merely consists of a secret sale or offer for sale but that does not operate to disclose the invention to the public. . . . The present bill’s new section 102(a) precludes extreme results such as these . . . .

        1. But, MM, what Leahy said is not the law. No third-party secret use has ever been deemed prior art. To the extent Leahy was intending to talk about the use by or for the patentee, he should have said “bar.” He did not. Since he did not, how can we legitimately read his remarks to be referring to the on sale “bar?”

          Regarding Kyl: He did use the term “bar,” then went on to talk about “policy” and “legitimate” public interest. Did that very knowledgeable Senator ever read Pennock v. Dialogue, a case that spoke directly to the public interest aspects of the issue? No, he could not have. That tells me a lot. He was just parroting advocates who either did not know about Pennock, or who disagreed with it, but who also did not give Kyl a legitimate discussion of the case, but rather gave him their BS agenda.

          I actually recall Kyl being against the current law because it would allow secret prior art in China to invalidate the US patent of another. Now, whoever told that to Kyl was really on the agenda roll.

    3. A new corporation (I personally cannot be touched) officially offers for sale the vaunted Big Box of Protons, Neutrons, and Electrons.

      Anything (and everything) composed or configured of any quantity of these three things is now – per Dyk – not patentable because of the prior art effect of the offer for sale of Big Box.

      THAT is the logical conclusion of Dyk’s “reasoning.”

  6. Dennis, I’m not sure if the PTO’s interpretation is overruled because the court here says that the sale was not really secret – it was a public sale that, to be fair, didn’t reveal the workings of the invention.

    1. The PTO interpretation is overuled because the PTO has no authority to promulgate substantive rules. The examination guidelines were an overstep of the PTO’s bounds. As a legal matter, those guidelines never existed for any purpose other than to instruct examiners.

      IEEE-USA commented on these guidelines, and urged the PTO to take a “better safe than sorry” approach. link to uspto.gov PTO created another problem though sheer legal incompetence.

      1. The PTO interpretation is overuled because the PTO has no authority to promulgate substantive rules. The examination guidelines were an overstep of the PTO’s bounds. As a legal matter, those guidelines never existed for any purpose other than to instruct examiners.

        Mr. Boundy, can the same then be said for all of the Office interpretations on 101?

        The moment that the Office steps away from a strict fact pattern already adjudicated (which would be nearly 100% of the time), are they not in a position of attempting to promulgate a substantive rule?

        And does that not merely reflect another problem with the Justice-scriven change to 101?

        The term that comes to mind is “Void for Vagueness.” And yes, that term most often is used in criminal law contexts, but as should be noted, the term also applies in contexts of life, liberty and property.

        1. Anon —

          The Office is in a funny position. They are required under one set of laws to issue guidance to examiners where there’s an ambiguity, and simultaneously, other laws provide that those guidelines are simply irrelevant in any context outside the PTO.

          On your issues relating to courts, we’ve had similar discussions before (assuming you’re the same “Anon”). YI can’t cut through your thicket of misinformation and uneducated inference. To take only one example, as we’ve discussed before, “void for vagueness” applies only in a criminal context, and only to legislative acts. At some point, your continued reference to the doctrine in the context of Article III civil matters reveals that you’re not engaging in a good faith effort to persuade, learn, or teach. You’re just a waste, and I won’t engage with you.

            1. As for only applying in legislative acts, you quite miss the fact that if the Court is going to violate that very same separation of powers and themselves write patent law, then surely the concept that applies to the legislative branch must also apply to the Court’s writing of law as well.

              You are more than free to engage as you desire, and if the observations of the Supreme Court “offend” your sense of “supremeness,” feel free to be hushed like the rest of the crowd before the emperor in the buff.

              Also, feel free to engage on those points – like here with the Office “catch22” that you are more comfortable with.

            2. Just a small taste, David:

              link to volokh.com

              Love how you attempt a fallacy of “I use my name thus have authority” as well.

              That just does not translate well for you though, and in fact, makes your error in regards to some “criminal” element as necessary to the doctrine all the more damaging to you.

              I would add that your views on the “Supremeness” of the Supreme Court suffer a similar “taste” of error. As you** never returned to a discussion on that matter (on the Quinn blog), so too, I doubt your return here to acknowledge your plain error on a foundational element of the discussion.

              Again, this does not work so well for you (no matter how well you may have done in an accredited law school, or how many states you have passed a bar for).

              As my friend Greg likes to occasionally note (although he prefers the Latin), even Homer nods.

              1. This does nothing to prove your point.

                My Con Law Treatise states that “void for vagueness” is only criminal, and (by silence) implies that it’s never been applied to a private law (that is, non-government against non-government) context, as you would need to support your thesis. Civil penalty? OK, I’ll give you that. You may recall from your Constitutional Law class that many constitutional principles of criminal law apply to civil penalties as well. I’m not surprised.

                Anon, I know a lot of people that aren’t all that knowledgeable, but they are curious, receptive to learning, and have enough judgment to know when they need to take a different approach.

                You are not knowledgeable, and my experience with you (both direct and the conversations I see you having with others) suggests you are as opaque to learning as MM. The definition of perfect and incurable ignoramus.

                I suspect that this is the last message in which I engage with you.

                David

                1. Whether last or not is up to you, but at the same time that “you give me that,” you also refuse to learn the point yourself, and then accuse me of failing to learn.

                  Truly an instance of “four fingers pointing back at you.”

                  And just as clearly, you seek to hold onto “criminal only” when it is clearly not so.

                  Your con law treatise is wrong and it is you that refuses to learn by clinging to something shown to be wrong.

                  I can provide other instances of “Void for Vagueness” outside of the criminal context, but if you are going to “give them to me,” whole continuing to cling to your treatise, what would be the point?

  7. Why does the Federal Circuit refer to a bar from the “on sale” of an “invention,” since the invention is not being sold? The issue is what product was being sold and if that product was covered by a subject claim. What is the content of the product understood as being offered for sale* is the question, not what fully descriptive details of it are in the invoice or other contract of sale document [which they are often not].

    [Nor is this a Metallic Engineering case fact situation of a secret commercial use of a manufacturing process to make and publicly commercially sell products made by that secret process. That doctrine is an application-filing-forfeiture solely by that user, not a statutory bar to everyone.]

    *and if it was ready for patenting

    1. I’m not sure what you’re getting at, Paul. Aren’t all the products “covered by a subject claim” included within the phrase “the invention”?

    2. Congress wanted to remove personal bars that acted as prior art.

      They flipping even renamed the section of law.

  8. At least whatever-kind-of-sale-this-is still seems to be classified in a way that preserves its grace period post-AIA:

    “The critical date for the on-sale bar is one year earlier…”

    “The parties agree that the [post-AIA] patent has the same critical date as the pre-AIA patents for the on-sale bar even though it is governed by the AIA. The one-year grace period in the AIA is less protective than under pre-AIA § 102(b) for reasons not relevant here.”

  9. Good job Federal Circuit! No showing of Congressional intent that intended to do away with the Metallic Engineering case.

    1. You know, when I saw that Judge Dyk authored the opinion, I braced myself for a real howler, but mostly I agree with you that this was a fairly well considered opinion. I think that reasonable minds can disagree about the Congressional intent expressed by “or otherwise available to the public” in the AIA 102. It was rather luck of the draw what panel would first get to consider this issue, but Judge Dyk wrote a very plausible explanation for why he (and his colleagues on this panel) read the new statute in the way that they read it, and now that this point has been decided, it is precedent that presently binds other panels (made up of other judges, some of whom do not agree with this reading).

      I would say, however, that given how important are the issues at stake in this case, I do not expect this panel decision to be the last word on this issue. I consider it more likely than not that the CAFC takes this one en banc. I expect that the other ten active service judges are going to want a chance to weigh in on this particular issue, and are not going to be content to let this point of AIA law rest on Judge Dyk’s say-so. I am not saying that I necessarily expect the en banc court to decide the issue differently than did Judge Dyk. Just that I think that they will want a chance to voice their views (and maybe walk back Judge Dyk’s dictum on Medicine’s Co.).

      1. They must have been reading the extended dialog anon and I have had on this point over the years. Dyk’s opinion adopts my position four-square.

        Eat it anon.

      2. and now that this point has been decided, it is precedent that presently binds other panels (made up of other judges, some of whom do not agree with this reading).

        Without any regard as to my personal views (and this comment would apply if I really thought it was a swell opinion), but when was the last time in the CAFC that a panel gave true (and full) weight to what another “mere” panel decided?

        1. Hm, my impression is that most CAFC panels act as if they are bound by other panel opinions. I think that the CAFC usually does a good job of working within the spirit of stare decisis.

            1. Right off the top of my head, I am thinking of the panel opinion in In re Tam. The panel was unanimous in affirming the TTAB rejection because that is what controlling precedent required. But then Judge Moore, who wrote for the majority, added a codicil at the end to urge en banc reconsideration of her own opinion, because while she felt herself bound by precedent, she thought it (wrongly, in my opinion) a poor precedent, that ought to be overturned.

              Similarly, both Click-to-Call and WiFi One featured concurrences (not dissents), because on or another panel member felt bound by Achates, but also felt the need to explain why Achates is such a poor precedent. NB, Achates has never been more than a panel opinion. It was not an en banc case.

              1. Evidence would need to be more than mere examples.

                Following state decises means following it as a rule (with – generously – maybe an exception or two.

                Even a 50/50 split is not evidence for your statement.

                1. Fair enough. In that case, I have no evidence. Whereof one lacks evidence, thereof one must remain silent, so I guess I have nothing to say on this point.

    2. Congress could not have intended to overrule Pennock unless they expressly named that case. They did not.

      It is Pennock that is controlling law, not Mettalizing.

      1. Congress could not have intended to overrule Pennock unless they expressly named that case.

        Just to be clear about this “doctrine”, if Congress accurately refers to the holding of a case and states that “we’re reversing this holding with this statute” and then writes a statute that seems like it could reasonably reverse the holding, is it fatal Congressional intent if they didn’t “expressly name the case” or if they accidentally named a different case with an unrelated holding?

      2. Ned: Congress could not have intended to overrule Pennock unless they expressly named that case.

        Just to be clear about this “doctrine”, if Congress accurately refers to the holding of a case and states that “we’re reversing this holding with this statute” and then writes a statute that seems like it could reasonably reverse the holding, is it f@tal to Congressional intent if they failed to “expressly name the case” or if they accidentally named a different case with an unrelated holding?

        1. I think the rule is that congressional intent needs to be clear such that it is presumed that Congress otherwise intended to legislate without overturning controlling Supreme Court precedent. Thus the legislation is interpreted to be consistent with Supreme Court precedent rather that not unless the very words of the statute cannot be interpreted otherwise.

        2. Also, Egbert v. Lippmann was not about “on sale.” It was about 10 years of public use by the inventor prior to filing his patent application while his invention was in public use by others, where the inventor offered the Supreme Court the “excuse” that the public could not see the women’s corsets.

      3. Congress could not have intended to overrule Pennock unless they expressly named that case.

        I cannot agree with this as formulated, but I agree with the broader point that Congress needs to be very clear if it wants to overturn a long standing precedent (especially a SCotUS precedent). I consider “or otherwise available to the public” to be a close question. One could regard this formulation as “clear enough” (in view of ejusdem generis) to overturn Pennock and/or Egbert, or one could fairly regard it as not quite clear enough (the intent to overturn those cases could surely be more clear, such as something along the lines of the second sentence of 103(a)).

        I regard both Pennock and Egbert as real duds, so I would have been delighted to see this panel go the other way on “or otherwise available…,” but I can hardly fault this panel for construing the statute as they have. Theirs is a wholly plausible construction.

        1. Those duds, by dear Greg, are my intercontinental ballistic missiles.

          If one could indefinitely make and sell a product embodying the inventor but keep an exclusive on it because one kept the formula secret (think Coca Cola), and only when others began to discover the secret, patent the secret formula and/or the product (the latter could be done if there was nothing like the former 102(b)), people would have incentive to use this technique which would then delay when the public might enjoy unpatented used of the invention.

          Congress is only authorized to grant exclusive rights for limited terms. This “technique” offers exclusive rights for life of the trade secret + 20years, sounding a lot like the rule against perpetuities.

          1. Ned, I agree with you on the substance of the law but disagree with the reasoning.

            If the statute wanted to punish the patent owner for delay, it would require some kind of ticking clock once the inventor could have applied for a patent.

            I think there is basically one rationale, and that is to prevent extension of sole commercialization beyond 17 years.

            Continental Plastic Containers v. Owens Brockway Plastic Products, Inc., 141 F.3d 1073, 1078–79, 46 U.S.P.Q.2d (BNA) 1277 (Fed. Cir. 1998) (May 27, 1998) (“…[T]he primary policy underlying an ‘on-sale’ case is that of prohibiting the commercial exploitation of the design beyond the statutorily prescribed time period.”)

            1. J,

              As previously put to Ned, any time gained for a different statutory protection falls under a different law and different legal basis.

              That the Court mistakenly confuses and attempted to conflate different times under the different provisions of law does not mean that any one else should do so as well.

              A counter point previously put to Ned: the mere fact that a trade secret could theoretically extend to forever quickly shows the fallacy of trying to “combine” times. If one were adamant about combining, then trade secrets in and of themselves would need to be deemed illegal as violating the patent laws.

              Ned refuses to face the small fact that patent protection ONLY is possible if one decides to pursue it, and it is the act of initiating pursuit of that protection that begins the clock on the timing of that protection.

              It really is unethical to attempt to simply not see this fact and if one persists to attempt to conflate the different times afforded by different laws, the choice between stu pid ity and deviousness leaves no good choice at all.

            2. J,

              1. Have you read Pennock?

              2. Are you aware that if one does not file within two years of reduction to practice that one is deemed to have abandoned one’s invention?

              The 102(b) simply allowed a one year grace period. Pennock held that any commercial exploitation before the filing was disabling.

              1. Are you aware that if one does not file within two years of reduction to practice that one is deemed to have abandoned one’s invention?

                Not any more – See the AIA.

          2. “Congress is only authorized to grant exclusive rights for limited terms.”

            Lol. See copyright law (e.g., the indefinite term of Micky Mouse).

            There is no question the quoted Senators wished to overturn the holding of Egbert (as they understood it), at the very least. Egbert held that “public and common use” as stated in the 1839 Patent Act could mean a non-visible use by one person other than the inventor if that person was not under an any restriction or obligation of secrecy. Assuming for the sake of argument that the Senators’ comments are controlling as to interpretation of the law (of course they are not), the new 102 should at least be construed such that that use by one or a small number of people, without knowledge by the greater public, even without restriction or obligation of secrecy, should not act as bar.

            This CAFC decision (though an on-sale, not a use case) fits squarely within that interpretation. The offer for sale acted as a bar because the greater public was made aware of it. This was an easy case. What will happen in the case of an offer for sale where NDAs are signed and no parties other than those involved have knowledge? What about a case where an offer occurs before the critical date, but it is not publicly disclosed until after? And what about the Egbert case, where one person, without restriction, has used an invention in public, but no other member of the public is aware? All these questions remain to be answered.

            Personally, I don’t see the harm in overturning Egbert. I know patent attorneys don’t like mushy tests, but there’s a point at which a use (or sale even) moves from private to public, and that point will depend on the facts of each case, e.g., the extent of the use, number of user, nature of invention, restriction on use, commercial benefit, etc. (similar to experimental use factors, without the experiment-related ones). This will protect an inventor as in Egbert who made no real commercial use of the invention prior to patenting (unless impressing his girlfriend(s) counts), but still bars your coca-cola example. That is my take on what the Senators meant and on how the new 102 should be interpreted.

            1. Egbert held that “public and common use” as stated in the 1839 Patent Act could mean a non-visible use by one person other than the inventor if that person was not under an any restriction or obligation of secrecy.

              You miss the nuance was that the use by another in Egbert was with the consent of the inventor and thus was deemed to be the act of the inventor/patentee.

              The 1836 Statute read,

              “SECTION 6. And be it further enacted, That any person or persons, having discovered or invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used by other before his or their discovery or invention thereof, and not, at the time of his application for a patent, in public use or on sale, with his consent or allowance, as the inventor or discoverer”

            2. Also, Egbert used his invention for its intended purpose for 10 years prior to filing a patent application even while the invention went broadly into public use by others.

              Overturning Egbert is bad policy if that is what Congress wanted to do.

              But it is clear from your post that Congress may not have understood Egbert if Congress understood Egbert to the same extent that you do.

              1. Consent was stipulated in Egbert. The only issue in dispute was the meaning of “public use” and whether it included a use by one person where the use was not visible or known to the public at large. “If an inventor, having made his device, gives or sells it to another, to be used by the donee or vendee without limitation or restriction or injunction of secrecy and it is so used, such use is public even though the use and knowledge of the use may be confined to one person.”

                As you’ve stated, third-party secret use/sale has never been a bar-trigger, and the AIA did not change that. My point is that, if Congress’s intent was to overturn Egbert, that means the current “public use” cases (e.g., Dey v. Sunovion Pharma) set too low a bar for what constitutes “public use” and should no longer include cases like Egbert where the use was in public without restriction, but was limited to one (or a few) people and not known to the public at large.

                1. Yoda, I am not so certain that Egbert truly applies to public use by third parties, as that implicates different policies — that the one cannot withdraw from the public domain inventions that are already in public use. If the invention is not even known or knowable to the public, is that even a public use?

                  Look at In re Caveney, 761 F. 2d 671 (Fed. Cir. 1985). At fn. 5 the court said, “The “on sale” provision of 35 U.S.C. § 102(b) is directed at precluding an inventor from commercializing his invention for over a year before he files his application. Sales or offers made by others and disclosing the claimed invention implicate the “public use” provision of 35 U.S.C. § 102(b).”

                  It went on in that case to hold the single offer to sell, coupled with samples, to be a 102(b) bar — implicitly, as a public use. The holding made clear that the sale must disclose the invention:

                  “When a sale disclosing the invention is made by a person other than the patentee or patent applicant, as in this case, the policy against removing inventions from the public domain and the policy favoring early filing of patent applications justify application of the “on sale” bar.”

                  Id. at 676.

                  (Effectively, such was a public use.)

        1. Anon, and Pennock has nothing to do with your position on what it holds — which was what again? Remind us.

          1. Pretty sure something about statutory law and the delegation of writing that actual law to one single and particular branch of the government (that branch not being the judiciary and their wink-and-nod treatment of what the Constitution means).

            Have you found your State attorney oath yet?

            1. anon —

              Yes, actually, I did fairly recently.

              Are you admitted in aany state? Which? Does your state require a JD from an accredited law school? Which one awarded your degree?

              me: Massachusetts and New York and several federal trial and appeal courts. Columbia Law with honors.

              1. Too funny David – you appear to still have your feathers ruffled from above (while not diving back in and admitting your own error vis a vis the non-existent criminal law requirement to the void for vagueness doctrine).

                But to answer your questions, and not playing the silly “out yourself” game, yes, I am admitted to a state bar, and yes, my state does require a JD from an accredited school, which I have, and no, I will not tell you which state.

                Now perhaps, once your feelings settle down here, you might notice why I asked Ned for his state attorney oath.

                Would you care to share the State attorney oaths for Massachusetts and New York with all of us? If you do so, I will follow up and cement the point of my post to Ned.

                That is, if you really care at all about that point, and you were not just making some silly quip in thinking that I “cannot be an attorney” because you in error still “feel” that my arguments don’t hold water, that is.

  10. I will add though that the case does pay out nicely the “mulligan” given especially to Big Pharma with the “ready for parenting” discussion.

    “Lays out nicely” means that the arguments are presented. Of course, this does not mean that those same arguments should be the ones that control.

    I do recognize that current controlling law is not in accord with how the law should be applied (without that mulligan for Big Pharma).

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