(FITF) Other Prior Art (Sec. 102(a)(1) (AIA))

  • BASICS (FITF): Prior art expanded to include foreign public use, foreign on sale, and inventions “otherwise available to the public” before effective filing date of the claimed invention. 35 U.S.C. § 102(a)(1) (AIA), unless that disclosure was made 1 year or less before effective filing date and (A) was made by inventor or one who obtained disclosed subject matter from inventor, or (B) had earlier been publicly disclosed by inventor or one who obtained disclosed subject matter from inventor. 35 U.S.C. § 102(b)(1) (AIA).
  • Foreign On Sale And Public Use Activity On Equal Footing With U.S. Activity: No distinction under FITF regime.
  • Change to Public Use and On Sale Law?: Patent owners may argue that “otherwise available” language means that secret sales/commercialization, by third party or inventor, is not prior art. Accord MPEP 02(c) (“public use under AIA 35 U.S.C. § 102(a)(1) is limited to those uses that are available to the public.”); MPEP 2152.02(d) (“The ‘or otherwise available to the public’ residual clause of AIA 35 U.S.C. § 102(a)(1), however, indicates that AIA 35 U.S.C. § 102(a)(1) does not cover secret sales or offers for sale. For example, an activity (such as a sale, offer for sale, or other commercial activity) is secret (non-public) if it is among individuals having an obligation of confidentiality to the inventor.”) Patent challengers will want to argue that pre-AIA “public use” and “on sale” law still applies. See Helsinn (Fed. Cir. 05/01/17) (rev’g bench-trial judgment of no on sale bar of both pre-AIA and FITF claims; pre-critical date patent owner entered exclusive distributor and requirements supply agreement with distributor agreeing to supply two doses (one claimed) of the claimed drug product at a specified minimum price, but could terminate if FDA did not approve either dose, which agreement was made public except for price and precise doses. “The AIA did not change the statutory meaning of ‘on sale’ in the circumstances involved here.”), cert. granted (U.S. 06/25/2018) (Question Presented: “Whether, under the Leahy-Smith America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.”)
  • “Otherwise Available” Art: Preserve argument that oral presentations qualify as prior art. See MPEP 2152.02(e) (“Even if a document or other disclosure is not a printed publication, or a transaction is not a sale, either may be prior art under the ‘otherwise available to the public’ provision of AIA 35 U.S.C. § 102(a)(1), provided that the claimed invention is made sufficiently available to the public.”)

35 U.S.C. § 102(a)(1) (FITF): “(a) 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.”

35 U.S.C. § 102(b)(1) (FITF): “1. DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

  1. the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
  2. the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.”