Three years on: what the new definition of prior art means today

On March 16, 2016, it will have been three years since the definition of prior art changed under the America Invents Act (AIA). Under the AIA, every application filed on or after March 16, 2013 is examined under a new standard for anticipation, unless the application has an effective filing date before this date. In essence, the passage of the AIA converted US patent law from a ‘first-to-invent’ to a ‘first-to-file’ system, thereby harmonising the US patent system with the rest of the world.

While the new language re-defining the meaning of “prior art” simplifies the analysis for prior art determinations in some respects, it additionally raises new questions and concerns that patent owners, applicants, and their attorneys must take into account. Three years under this new first-to-file regime have provided some answers on how the AIA has changed patent protection in the US, but numerous uncertainties remain, and those seeking patent protection for their inventions need to be aware of these uncertainties to avoid jeopardising their patent rights.

The new definition of prior art

Prior art is defined in US law under 35 USC §102. The previous version of §102 divided prior art into seven separate categories. The AIA reduced the number of categories to two. 35 USC §102(a)(1) provides that an invention is barred patentability if it is “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”, and 35 USC §102(a)(2) bars patentability if an invention is “described in a [US] patent” or “in [a US] application” or if it “names another inventor and was effectively filed before the effective filing date of the claimed invention.” §102(d)(2) further recites that the effective filing date of a patent or application relied on under §102(a)(2) can include the filing date of a parent application to which the patent or application claims priority if the parent application contains the subject matter describing the claimed invention.

In addition to these two categories, 35 USC §102 recites two categories of exceptions to the two categories of prior art. Under the first:

“A disclosure made one 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:

(A) 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

(B) 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.”

The second exception provides that a patent or application under §102(a)(2) is not prior art if:

“(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), 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; or

(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.”

§102(c) further defines the requirements for a joint research agreement to be sufficient to establish that the subject matter disclosed and the claimed invention were owned by the same person under the second exception.

In addition, the AIA simplified 35 USC §103, the statute for obviousness, by removing all previous language from the statute except the basic definition of obviousness: whether “the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains”. This definition is largely unchanged from the previous definition of obviousness before the AIA, except that the date of analysis was changed from “the time of invention” to “the effective filing date.”

Prior art at the USPTO

At the US Patent and Trademark Office (USPTO), prosecution of patent applications under the new definition of prior art remains largely unaffected. Both before and after the enactment of the AIA, patent examiners first and foremost search for patents, published patent applications, and other publications with clear publishing dates of more than a year before the effective filing date of the application.

However, due to the transition to a first-to-file system, one of the most significant changes following the AIA is that interference proceedings for patent applications with effective filing dates after March 16, 2013 have been eliminated. Under the AIA, a patent application can no longer be granted priority over a second earlier-filed application if the applicant can prove that he or she had invented the claimed invention before the invention date of the second application.

“Avoiding the new pitfalls and taking advantage of the new exceptions will be vital in navigating the new prior art framework to successfully protect inventions.”

This means the USPTO no longer has to engage in lengthy and fact-intensive interference proceedings to determine which applicant has priority and can instead rely simply on the filing dates of the applications. This is also a win for most applicants, likewise saving them the cost of trying to argue and prove invention dates in front of the USPTO and establishing a bright-line rule for applicants to determine who has priority.

However, the AIA does allow applicants, under limited circumstances, to challenge whether an earlier-filed application is an unauthorised derivation of the applicant’s claimed invention, and therefore not invented by the listed inventors of the earlier-filed application.

The losers from this change under the AIA are primarily inventors and applicants who neglect to move quickly to file their applications, as well as patent practitioners that do not move quickly after engaging a client who wishes to seek patent protection, especially in technology areas or industries where innovation continues to take place regularly and patent applications are regularly filed.

While most patent applications will not have a problem with a competing patent application covering the same subject matter being filed shortly before its effective filing date, patent applicants and their patent attorneys or agents should make early determinations about whether to pursue a patent or, alternatively, choose to protect their invention as a trade secret.

Another significant change at the USPTO involves the exceptions enacted by the AIA, which provide a new set of tools to patent practitioners to disqualify prior art asserted by a patent examiner.

The new exception under §102(b)(1)(B) and (b)(2)(B) provides that any disclosure, such as a magazine article, with a date one year or less before the effective filing date, or patents or applications that qualify under §102(a)(2), can be disqualified as prior art if the applicant can prove that one of the inventors, or a person who received the subject matter from the inventor, publicly disclosed the subject matter in the disclosure first, even though the inventor’s disclosure must be less than a year before the effective filing date.

For now, the exact extent of how identical the subject matter needs to be between the two publications has not been decided by the US Court of Appeals for the Federal Circuit, so practitioners should be aware that the success of this argument is not guaranteed.

Another exception that has been broadened under the AIA allows applicants to disqualify patents and applications that were filed before the claimed invention but issued or published afterwards and that they themselves own, as long as the patent or application was owned by or subject to an assignment to the same party at the effective filing date of the claimed invention. Before the AIA, this exception applied only to patents or applications used in obviousness-type rejections. The AIA expands this exception to anticipation-type rejections, giving applicants additional options to overcome rejections.

New concerns

The new definition of prior art raises new concerns that US patent owners and applicants need to be aware of. For instance, prior art need not be publicly available only in the US. Before the AIA, public knowledge of the claimed invention outside the US could only be prior art under limited circumstances, such as a printed publication or an issued patent. Post-AIA, publicly available disclosures, including public uses or sales, in anycountry can qualify as prior art, leaving patent owners with more uncertainty and patent challengers with a broader net to invalidate patents.

On the other hand, the AIA probably protects non-public negotiations and discussions by patent owners and applicants with manufacturers and suppliers, at least to the extent that the negotiations and discussions take place under a confidentiality agreement. Because §102(a)(1) states that the claimed invention must be “otherwise available to the public”, the general understanding is that sales of the claimed invention must be public to be used as prior art, thereby excluding, for instance, “secret sales” of products from a manufacturer to a patent owner when those sales are before the public offer for sale of the product and are under a confidentiality agreement.

However, the federal circuit has yet to interpret this language, so the chance remains that these sales could still be used as prior art. A case currently under appeal at the federal circuit involves this issue—Helsinn v Dr Reddy’s and Teva—so an interpretation of this provision could be issued in the near future. Nonetheless, patent owners and applicants should liberally use confidentiality agreements in any discussions with any third parties where a potentially claimed invention could be discussed.

While the AIA maintained many elements of the pre-existing definition of prior art, there are enough differences to require patent owners, applicants, and practitioners to solidify their understanding of the new definition from the early stages of invention through the patent preparation, filing, and prosecution stages. Avoiding the new pitfalls and taking advantage of the new exceptions will be vital in navigating the new prior art framework to successfully protect inventions, as well as to successfully defend against patent infringement.

Even though the law is now three years old, a long road lies ahead while the US court system slowly but inevitably interprets and applies the AIA to patents and applications.

Russell Dunlap is a member at  Taylor English Duma. He can be contacted at: rdunlap@taylorenglish.com