Tag Archives: AIA

Policy Considerations: The On-Sale Bar for Secret Processes

August 15, 2024PatentAIA, Federal Circuit, First-to-File, International Harmonization, Metallizing Engineering, On-Sale Bar, paid, Patent Invalidity, patent litigation, patent policy, Patent Term, prior art, Prior User Rights, public disclosure, Secret Prior Art, Trade SecretsDennis Crouch

by Dennis Crouch

In light of the Federal Circuit's recent decision in Celanese v. ITC, it's worth examining the policy implications of maintaining a strong on-sale bar that extends even to invalidate patents on secret processes when the resulting products have been commercialized. This rule is rooted in pre-AIA jurisprudence and is now affirmed under the AIA.

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No Sugar-Coating: Post-AIA Patent on Secret Process Barred by Pre-Filing Sale of Product

August 12, 2024PatentAIA, Artificial Sweeteners, Federal Circuit, Helsinn, International Trade, ITC, On-Sale Bar, paid, Patent Filing Strategy, Patent Harmonization, patent litigation, patent validity, prior art, Secret Processes, Statutory Interpretation, Supreme CourtDennis Crouch

by Dennis Crouch

Although the result could have been guessed, the Federal Circuit has issued an important decision interpreting the scope of post-AIA 35 U.S.C. 102 -- and the meaning of the "claimed invention." Celanese Intl. Corp. v. Intl. Trade Comm'n, 22-01827 (Fed. Cir. August 12, 2024). In particular, the court affirmed the precedent of D.L. Auld -- i.e., the on-sale bar continues to block patenting of an otherwise secret process when the patentee makes pre-filing sales of product made using that process. The ITC had invalidated Celanese' artificial sweetener manufacturing process patent based upon these pre-filing sales. That judgment was thus affirmed on appeal.

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Federal Circuit Narrows AIA Grace Period: Public Disclosure Must Make Invention ‘Reasonably Available’

August 5, 2024Patent35 U.S.C. § 102, AIA, Federal Circuit, grace period, paid, patent law, prior art, public disclosure, safe harborDennis Crouch

by Dennis Crouch

The Federal Circuit's new decision in Sanho v. Kaijet highlights the narrowness of the pre-filing grace period (safe harbor) provision under the America Invents Act (AIA) and serves as a reminder that there are a number of patents that would have been valid under the pre-AIA patent system may no longer be valid under the current law. Sanho Corp. v. Kaijet Technology International Limited, Inc., No. 2023-1336 (Fed. Cir. July 31, 2024).

The basic holding is that the 102(a)(2)/(b)(2) safe harbor triggered by an inventor's pre-filing "public disclosure" of the invention requires that the invention be made "reasonably available to the public." Neither public uses nor private sales satisfy this requirement. This is a long post, because the issues are both important and interesting. In the end, I suggest a panel rehearing in the case because I believe that the Federal Circuit unfairly found forfeiture of key arguments whose resolution would help clarify the law.

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A few initial thoughts on Loper Bright and the end of Chevron Deference

July 2, 2024PatentAdministrative Law, AIA, APA, Chevron, deference, Federal Circuit, ITC, judicial review, obviousness, paid, patent law, patent term adjustment, PTAB, Sonos v Google, Statutory Interpretation, Supreme Court, USPTODennis Crouch

by Dennis Crouch

This is just a first look at how overturning Chevron may impact patent practice.

In the past, both the USPTO and patent attorneys have largely ignored the larger scope of administrative law, but in recent years USPTO operations have been under tighter control from the White House, and courts have increasingly asked whether the agency is following the rules. Administrative patent law was truly launched with the American Invents Act of 2011 and the resulting administrative patent trials by the PTAB -- resulting in hundreds of appeals arguing that the USPTO's procedural approach is an abuse of administrative power. Importantly, the Supreme Court in Cuozzo Speed Techs. v. Com. for Intell. Prop., 579 U.S. 261 (2016) provided the patent office with Chevron deference for its determinations regarding AIA trials, including issues such as its approach to claim construction. But Chevron has now been overruled, and many are wanting the Federal Circuit to revisit the USPTO approach.

Although I expect that the outcome

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New USPTO Director Review Rules

April 15, 2024PatentAIA, Arthrex, director review, paid, patent law, PTAB, USPTODennis Crouch

by Dennis Crouch

The USPTO has published a notice of proposed rulemaking (NPRM) to formalize the process for Director Review of PTAB decisions. These proposed rules come in response to the Supreme Court's decision in United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021), which underscored the necessity for the USPTO Director to have the ability to review PTAB decisions to comply with the Appointments Clause of the U.S. Constitution. Of course, the USPTO has been operating under an interim procedure for Director Review that began soon after Arthrex, but has been updated a couple of times. The NPRM closely follows the most recent version of the interim rules.

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