Prior Art Redefined Under the AIA

The America Invents Act’s (“AIA’s”) overhaul of the U.S. Patent law system has significantly redefined what constitutes available prior art that can be used to reject patent applications or invalidate patents.[1] Thanks to the AIA changes which took effect on March 16, 2013,[2] the AIA has both expanded as well as contracted the universe of available prior art. As pre-AIA patents and patent applications will continue to exist at least until March 15, 2034, not counting patent term extensions or adjustments, practitioners must continue to grapple with both pre-AIA as well as AIA rules, particularly with respect to AIA patent applications claiming priority to pre-AIA applications. Currently, there are no court decisions interpreting AIA 35 U.S.C. § 102.

In this article, we will discuss how the AIA expanded the definition of prior art, describe the AIA § 102 prior art exceptions, and suggest strategies that practitioners can consider in dealing with prior art and transitional applications.[3]

1. AIA both expands and contracts the definition of prior art

Under the AIA, the new definition of prior art is broader in some respects and narrower in others. Practitioners will be operating under multiple versions of 35 U.S.C. § 102 at least until March 15, 2034. Understanding the differences between pre-AIA and AIA law, and when each applies, is critical to effectively managing the application of prior art.

A. AIA §§ 102(a)(1) and (2) prior art

The pre-AIA patent law included seven separate conditions for patentability under 35 U.S.C. §§ 102(a)-(g). Under AIA §§ 102(a)(1) and (2), these seven conditions have been replaced by two conditions, along with exceptions to each, that dramatically increase the scope of what constitutes prior art.

Under AIA § 102(a)(1), the prior art includes not only prior publications, but any public disclosure, something in public use, on sale, or otherwise available to the public anywhere in the world in any language prior to the effective filing date of the claimed invention.[4] The phrase “otherwise available to the public” as used in AIA § 102(a)(1) is a broad “catch-all” provision that expands the definition of prior art beyond the prior use, sale, and publication of the claimed invention.[5] Thus, public availability of the subject matter may arise in situations such as a video posted on the internet, a lecture, an oral presentation delivered at a scientific meeting, or even a public transaction that is not a sale.[6]

Prior art under AIA § 102(a)(2) is limited to U.S. patents, published U.S. patent applications, and published Patent Cooperation Treaty (“PCT”) applications designating the United States, which become available as prior art as of the date that they were “effectively filed.”[7] Additionally, according to AIA § 102(d), U.S. patents, published U.S. patent applications, and published PCT applications are “effectively filed” as of a foreign priority date, even if the foreign priority application was in a foreign language.[8] Accordingly, AIA § 102(d) has abolished the well-established “Hilmer doctrine,” expanding the scope of prior art that can be applied to applications.[9]

The AIA distinguishes between the terms “Effective Filing Date” (“Entitled to Priority”) and “Effectively Filed” (“Entitled to Claim Priority”) as they appear in AIA §§ 102(a)(1) and (2).[10] “Effective filing date” applies on a claim by claim basis to the claimed invention, and is defined as “the actual filing date of the patent or the application for the patent containing a claim to the invention” or “the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of [foreign] priority under section 119, 365 (a), or 365 (b) or to the [domestic] benefit of an earlier filing date under section 120, 121, or 365 (c).”[11] Entitlement to foreign priority or domestic benefit requires that the earlier application: (1) be codependent and specifically referenced; and, (2) provide both written description and enablement support for the claimed invention.[12]

“Effectively filed” applies when a U.S. patent, a U.S. patent application publication, or a published PCT application designating the United States, whether or not that PCT application ever enters into the U.S. national stage, is being considered as prior art against a claimed invention.[13] The effectively filed date can be the actual filing date of the patent or patent application or the filing date of the earliest prior filed domestic or foreign application for which the application or patent is entitled to a priority or benefit claim.[14] The entitlement to claim priority or benefit of a prior filed application only requires satisfying the ministerial requirements that an application be codependent and specifically referenced.[15]

Thus, under AIA § 102(a)(2), certain patent disclosures may be prior art as of an earlier foreign “effectively filed” date even though they are not published until well after the “effective filing date” of the claimed invention. For instance, if a PCT application was filed on December 12, 2013, and properly claims priority to a German patent application filed on December 12, 2012, the published PCT application has a prior art date as of its effectively filed date of December 12, 2012. Therefore, the PCT application may be applied as prior art as of December 12, 2012, regardless of whether the German patent application enables the disclosure of the PCT application and is in a foreign language.[16]

Although still complex, the AIA rules are much simpler than the pre-AIA rules in the sense that geographical and language restrictions are now eliminated. The AIA rules eliminate certain types of prior art such as secret use, sales, and offers for sale, but they greatly expand others. Furthermore, an applicant can no longer remove prior art by claiming that the applicant invented first. All “prior art” is now measured from the effective filing date of the claimed invention.

B. Secret use and sales activity are not prior art?

The AIA goes a long way towards eliminating “secret prior art” by requiring that certain disclosures must be publically available to qualify as prior art. Under the AIA provisions, a prior public use or sale activity may occur anywhere in the world and qualify as prior art under AIA §102(a)(1). If such public use or sale activity were by the inventor, either directly or indirectly, and not more than one year before the effective filing date of the claimed invention, then the public use or sale activity would fall into a prior art exception under AIA § 102(b)(1)(A), as discussed below.[17]

Secret use of a process not coupled to public use of a product resulting from the process would not constitute prior art under the AIA because of the public accessibility requirement. However, what if secret use of a process is coupled to public use of the product? In a pre-AIA case, the U.S. Court of Appeals for the Second Circuit in Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co.[18] found that a patent on a process was invalid because, although the process was kept secret by the inventor, the product of the process had been in commercial use for more than a year before the patent application was filed.[19] Under AIA law, just like under pre-AIA law, this scenario could constitute public use for public policy reasons.[20] However, the Federal Circuit later held in W.L. Gore & Associates, Inc. v. Garlock, Inc.[21] that a process kept secret by one inventor will not constitute prior art as to another inventor who subsequently and independently makes the inventive process.[22] Whether Gore remains applicable under AIA law remains unknown.

With respect to “on sale” commercial activities, if a sale activity does not reveal or disclose the claimed invention to the public, the sale activity does not qualify as prior art under AIA § 102(a)(1). To qualify as prior art, the sale activity must make the claimed invention publically accessible.[23] Therefore, unlike pre-AIA § 102(b), AIA § 102(a)(1) does not make secret sale activity prior art. [24]

 “Experimental use” is an important exception to excuse prior offers for sale when made for experimental reasons to further an invention.[25] The status of the experimental use exception for public use under the AIA has not yet been determined. Neither the AIA nor its legislative history address whether the experimental use exception applies to a public use under AIA §102(a)(1).[26] The Patent Office also declined to address this issue, stating “[b]ecause this doctrine arises infrequently before the Office, and is case-specific when it does arise, the Office will approach this issue when it arises on the facts presented.”[27]

At the present time, there are no judicial interpretations of prior use and sales activity under the AIA § 102(a). Accordingly, the Patent Office’s interpretation of the AIA with respect to secret sales and commercial uses should be treated with caution until the courts weigh in on these activities.[28]

C. Effective filing date and the applicable prior art law

It is important to assess the effective filing date for each claim in an application to determine which law, e.g., pre-AIA § 102, AIA § 102, or both, will apply, and to define the window of prior art for both novelty and non-obviousness purposes. Depending on its effective filing date, an application will fall under one of three possible categories: (a) all pre-AIA claims having an effective filing date before March 16, 2013; (b) all AIA claims having an effective filing date on or after March 16, 2013; or (c) claims that have mixed effective filing dates of before and on or after March 16, 2013. For at least the next twenty years, applicants, patent examiners, attorneys, and courts will need to deal with both laws and with these three categories of patents or applications.

While the first and second categories are straightforward, there are unique complexities that will arise within the third category of applications, commonly referred to as “transitional” applications. Transitional applications that include “mixed” effective filing dates will fall under AIA § 3(n)(1) and § 3(n)(2).[29]

AIA § 3(n)(2)(a) states that the provisions of new AIA § 102 apply and the provisions of pre-AIA “sections 102(g), 135, and 291 of title 35 . . . shall apply to each claim of an application for patent . . . if such application…contained at any time a claim to an invention having an effective filing date” that occurred before March 16, 2013.[30] Thus, such applications will not only be examined under AIA law and subject to AIA prior art, they will also be subject to pre-AIA § 102(g) prior art and interferences. In other words, in addition to being subject to the new AIA § 102 prior art, transitional applications can be invalidated because of prior invention by another in the U.S., or become subject to an interference proceeding to determine who was the first to invent. Fortunately, an applicant will have the option of swearing behind or showing prior invention when faced with certain pre-AIA § 102(g) secret prior art.

Once a transitional application falls under AIA § 102, it will always remain under AIA § 102, even if claims with an effective filing date on or after March 16, 2013 are subsequently cancelled.[31] Moreover, any progeny of a prior application subject to AIA § 102 will also be examined under AIA § 102.

The process of sorting out whether the AIA or pre-AIA law applies to any particular patent application may be a thorny one. As the Patent Office put it, “care must be taken to accurately determine whether AIA or pre-AIA 35 U.S.C. 102 and 103 applies to the application.”[32]

2. AIA §§ 102(b)(1) and (2) Prior Art Exceptions

For AIA applications, an applicant cannot swear behind a reference. However, it is possible for applicants under certain limited circumstances to disqualify prior art under AIA §§ 102(b)(1) and (2).

Prior art under AIA § 102(a)(1), e.g., a publication, public use, or offer for sale, is subject to a “grace period” exception under § 102(b)(1) where disclosures made by an inventor or co-inventor (directly or indirectly) less than one year before the effective filing date can be removed as prior art. The grace period applies if the disclosures are made by an inventor or co-inventor or someone who obtained the information from the inventor, or if the disclosed subject matter was previously disclosed publicly by an inventor or someone who obtained it from the inventor.[33]

Both AIA § 102(a)(1) and § 102(b)(1) operate together to retain the principle of a one-year statutory time bar. Thus, if there is a public disclosure more than one year before the effective filing date of the claimed invention (i.e., before the grace period), the disclosure is prior art under § 102(a)(1) and none of the exceptions in AIA § 102(b) apply, regardless of whether the disclosure is the inventor’s own work.[34]

Under AIA § 102(b)(1)(B), subject matter that was disclosed by another after the subject matter had been publically disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor can be disqualified as prior art.[35] In other words, the subject matter disclosed in the intervening disclosure had, before such intervening disclosure was made, been publically disclosed by the inventor directly or indirectly. Any subject matter of the intervening disclosure that was not previously publically disclosed by the inventor is still available as prior art under AIA § 102(a)(1).[36]

Similarly, a disclosure under AIA § 102(a)(2), e.g., U.S. Patents, published U.S. patent applications, and published WIPO publications, can be disqualified as prior art under AIA § 102(b)(2) if the disclosure is made one year or less before the effective filing date of the claimed invention. The AIA § 102(b)(2)(A) prior art exception, referred to as the “inventor-originated disclosure” exception, “limits the use of an inventor’s own work as prior art when the inventor’s own work is disclosed in a U.S. patent, U.S. patent application publication or a WIPO published application by another who obtained the subject matter directly or indirectly from the inventor or joint inventor.”[37]

The prior art exception under AIA § 102(b)(2)(B), referred to as the “inventor-originated prior public disclosure” exception, provides an additional exception to AIA § 102(a)(2) prior art. Subject matter that was effectively filed by another after the subject matter had been publically disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor can be disqualified as prior art.[38] In other words, the subject matter disclosed in the intervening disclosure had, before such intervening disclosure was effectively filed, been publically disclosed by the inventor or joint inventor.[39] However, any subject matter of the intervening disclosure that was not previously publically disclosed by the inventor is still available as prior art under AIA § 102(a)(2).

Finally, the “common ownership or obligation of assignment” exception under AIA § 102(b)(2)(C) provides an additional exception to AIA § 102(a)(2) to disqualify prior art. For this exception, subject matter that was disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application is not prior art if the subject matter disclosed and the claimed invention “were owned by the same person or subject to an obligation of assignment to the same person” not later than the effective filing date of the claimed invention.[40] AIA § 102(b)(2)(C) resembles pre-AIA § 103(c) in that both provide common ownership avenues to avoid certain prior art.

Although the AIA § 102(b)(2)(C) exception disqualifies U.S. patents, U.S. patent application publications, or WIPO published applications as prior art under AIA § 102(a)(2), it does not remove them as a basis for any other rejection. For example, even if the reference is not prior art under AIA § 102 or AIA § 103, the reference can still be applied in the context of a statutory (§ 101) or obviousness-type double patenting rejection or an enablement rejection under § 112(a).[41] In addition, the AIA § 102(b)(2)(C) exception will not disqualify a reference that is prior art under AIA § 102(a)(1) (disclosures made prior to the effective filing date of the claimed invention), regardless of whether common ownership exists or there was an obligation to assign the reference.[42]

Another important exception to the prior art definition under the AIA is common ownership under joint research agreements (“JRAs”) under AIA § 102(c).[43] AIA § 102(c) is similar to pre-AIA § 103(c) but, to the applicant’s advantage, it broadens the scope of prior art that can be disqualified under pre-AIA § 103(c). Under pre-AIA law, § 103(c) disqualifies subject matter that is prior art under §§ 102(e), (f), or (g) from being used in an obviousness rejection where the subject matter and the claimed invention were, at the time the invention was made, commonly owned or under a JRA. AIA §§102(b)(2)(C) and 102(c) expand pre-AIA § 103(c) such that the applicant need only demonstrate that (1) common ownership or a JRA was in place as of the effective filing date of the application (instead of as of the time the invention was made), and (2) references used for both novelty and obviousness rejections can be disqualified (instead of only references used for obviousness rejections).[44] AIA § 102(c) may allow inventors to proactively deal with potential AIA § 102(a)(2) or AIA §§ 102(a)(2)/103 rejections with a JRA.

3. AIA § 103

While AIA § 103 continues to govern the nonobviousness requirement for patentability, there are some changes from pre-AIA § 103.[45] Notably, AIA § 103 determines obviousness as of the effective filing date of the claimed invention, instead of at the time that the claimed invention was made.[46] Under pre-AIA examination practice, the effective filing date is treated as the invention date, unless there is evidence demonstrating an earlier invention date, which would change the scope of prior art that could be cited against the invention.[47]

Further, AIA § 103 eliminates pre-AIA § 103(b), which is a rarely used exception that is specifically invoked by applicants under certain limited circumstances and applies only to nonobviousness of biotechnological inventions.[48] AIA § 103 also eliminates pre-AIA § 103(c), but corresponding provisions are found in AIA § 102(b)(2)(C) and § 102(c), as discussed above.

Generally, the pre-AIA obviousness concepts will continue to apply under AIA. AIA § 102(a) defines prior art for the purposes of novelty under AIA § 102 and obviousness under AIA § 103.[49] Thus, if a document is prior art under §§ 102(a)(1) or (a)(2), and is not subject to an AIA § 102(b) exception, it may be applied in supporting a rejection under AIA § 103.[50]

4. Using the AIA to solve certain prior art problems in transitional applications

Because of the expanded scope of available prior art to determine patentability under the AIA as well as uncertainty of how the courts will treat AIA § 102, there is a logical preference for dealing with pre-AIA law. To ensure that a transitional application is treated under the pre-AIA law, the application should include only claims that are fully supported by the prior transitional application or pre-AIA application. To protect additional subject matter, a separate continuation-in-part or new application can be filed instead. This will ensure that the transitional application and further continuation applications claiming priority to the transitional application will be treated under pre-AIA law.

When filing and prosecuting transitional applications, an applicant may consider filing the original transitional application followed by a preliminary amendment at least one day after filing the transitional application. If new claims submitted after the filing date of the transitional application are deemed to be unsupported by the priority application, the application is not converted to AIA provisions, but will instead be rejected as introducing new matter under 35 U.S.C. § 132.[51] Thus, filing a preliminary amendment at least one day after filing of the transitional application may shield applicants from arguments that the new claims are not supported by the pre-AIA priority application and should be subject to AIA law.

For instance, U.S. continuation or divisional applications are sometimes filed together with a preliminary amendment to present a different claim set than was originally presented in the parent application. The Office has stated that if claims are present in a transitional application on the same day as the filing of the application and are not supported by pre-March 16, 2013 disclosure to which priority is claimed, the transitional application and any subsequent application claiming priority to the transitional application will be subject to AIA provisions.[52]

In general, applicants may seek ways to avoid having transitional applications examined under the AIA. However, in certain circumstances, strategically subjecting an application to examination under the AIA may help the applicant obtain patent claims that are otherwise unpatentable under pre-AIA laws.[53] For instance, secret use, sales or offers for sale are not prior art under AIA law, contrary to pre-AIA law.[54] Similarly, the AIA expansion of the scope of the Cooperative Research and Technology Enhancement Act of 2004 (“the CREATE Act”) eliminates the use of non-public prior filings of a research partner from being used as potential anticipatory prior art.[55] Thus, if a reference is prior art under pre-AIA law, but not prior art under AIA law, it may be possible to refile an application being treated under pre-AIA law as a new application under the AIA, without claiming priority to the earlier application and without abandoning the earlier application. Alternatively, the applicant may create a continuation-in-part of the application being treated under pre-AIA and file the new continuation-in-part application including at least one claim directed to the newly added subject matter under the AIA.

While these strategies may result in eliminating a reference as prior art, the new application may be subject to some potential risks. For instance, the application may be exposed to new prior art references as a result of the later effective filing date. In addition, the new application may be subject to double patenting issues which have not yet been clarified under the AIA.[56] Furthermore, if the new application is a continuation-in-part of a pre-AIA application, pre-AIA § 102(g) prior art will still apply.[57] Finally, there may be some equitable risks to the applicant whereby an accused infringer could raise inequitable conduct or laches defenses based on an assertion that the new matter and claims were added as a formality so that the old claims can be interpreted under the more favorable AIA law.[58]

Conclusion

The sweeping changes resulting from the AIA overhaul of the U.S. patent law system significantly alter what is available prior art that can be used to invalidate patents or reject applications. Under the AIA, prior art no longer includes geographic and language restrictions. Furthermore, prior art applies against claims in AIA patents and patent applications as of the effective filing date of the claimed invention, not the date of invention. Patent practitioners will need to consider both pre-AIA and AIA law in their practice at least until March 15, 2034 in order to properly counsel their clients.