The Difficulty of Changing Statutes

As we continue to transition to patent prosecution under the AIA, many of us have made misstatements drawn from the substantial rewriting of 35 U.S.C. 102.  Its nice to see we are in good company.

Earlier this summer, the Federal Circuit decided Helsinn v. Teva – its first foray into interpreting the amended prior art definitions found in Section 102.  The case centered on whether the reorganization of the statute implicitly altered the definition of “on sale.”  In particular, the patentee (and the PTO) argued that the AIA focuses exclusively on publicly available prior art – and thus secret offers/sales should not be considered prior art under the statute.  The Federal Circuit rejected that argument and held that “on sale” as now codified in 35 U.S.C. 102(a)(1) continues to mean the same as it did pre-AIA when it was codified in 35 U.S.C. 102(b).

It turns out that in its original opinion, the Federal Circuit erroneously wrote “102(b)” – referring to the old on-sale bar – when intending to actually refer to the new law.  In a one line errata order today, the Federal Circuit corrects its typo: On page 27, change “under § 102(b)” to “under § 102.”  The court’s error here makes me feel a bit better about my several typos on the topic – especially considering that the decision was known to be an important decision and was reviewed by the entire court and numerous law clerks before release.  I will note here however, that this will not excuse similar errors on my Patent Law exam upcoming this Fall.

2 thoughts on “The Difficulty of Changing Statutes

  1. “held that “on sale” as now codified in 35 U.S.C. 102(a)(1) continues to mean the same as it did pre-AIA”

    Not so. The Helsinn opinion said that _if_ the existence of the sale is public (e.g. through a press release or SEC filing, as here), then the details of the sale need not be communicated to the public. Under the old law, even a secret sale would be prior art.

  2. “I will note here however, that this will not excuse similar errors on my Patent Law exam upcoming this Fall.”

    Man rough.

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