by Dennis Crouch
The pending cert petition in Celanese v. ITC asks whether the sale of products made using a secret process triggers the on-sale bar post-AIA. In my view, the case sets up a fundamental tension between a straight reading of the statutory text and longstanding precedent. My bet is on the precedent.
Although Congress has repeatedly tinkered with U.S. patent law over the past several decades, the America Invents Act of 2011 was clearly the most dramatic rewriting of the law since 1952. The fundamental change to Section 102 was the transition from first-to-invent to first-to-file. In addition, the law was amended throughout to focus on the "claimed invention" rather than simply the "invention." This second change is important for the Celanese case. 35 U.S.C. § 102(a)(1) now reads:
A person shall be entitled to a patent unless ... (a)(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.
The AIA also added a definition of the new term, defining "claimed invention" as "the subject matter defined by a claim in a patent or an application for a patent." 35 U.S.C. § 100(j). This heightened specificity was largely downplayed as a clarification that courts were already following. In particular, for anticipation situations courts were already asking whether the asserted prior art disclosed the invention as claimed.
But, one key divergence from this practice involves ...
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