AIA Did Not Change Years of Precedent

 

Ten years ago, when the American Invents Act (AIA) was passed and became effective in 2011, there was a debate among intellectual property experts about the meaning of AIA 35 U.S.C. § 102. (See, e.g., Did the AIA Eliminate Secret Prior Art? | Patently-O (patentlyo.com), Crouch, Dennis, October 10, 2012). One of the questions on most intellectual property experts' minds was, 'Did AIA 35 U.S.C. § 102, which in many respects mirrored the old provision, change the on sale and public use statutory bars?' In this regard, AIA 35 U.S.C. § 102(a) states, "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." The additional language "or otherwise available to the public" (i.e., "catchall phrase") called into question the current meaning of the preceding language "in public use" or "on sale".

The question regarding anticipated judicial interpretation was emphasized by the many years of precedent that were necessary to conclude what was meant by the pre-AIA 35 U.S.C. § 102 statutory language. For example, in 1946, Judge Learned Hand explained in Metallizing Engineering that a commercial use of an invention (even if done in secret) could count as a “public use” that would invalidate a later-filed patent application. Metallizing Eng‟g Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516, 520 (2d Cir. 1946), cert. denied, 328 U.S. 840 (1946). More recently, in 1998, the Supreme Court determined that an invention can be considered to be "on sale" within the meaning of pre-AIA § 102 when it is (1) the subject of a commercial offer for sale, and (2) ready for patenting. Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 67, 119 S.Ct. 304, 142 L.Ed.2d 261 (1998).

As many readers will know, part of this question of judicial interpretation was answered by the Supreme Court in 2019 by Helsinn Healthcare. See, Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 139 S.Ct. 628, 202 L.Ed.2d 551 (2019). The Supreme Court in dicta stated that "Given that the phrase 'on sale' had acquired a well-settled meaning when the AIA was enacted, we decline to read the addition of a broad catchall phrase to upset that body of precedent." Helsinn Healthcare, 139 S.Ct. at 634. After this statement, the Supreme Court held "that an inventor's sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under § 102(a)..." Id. Therefore, the answer to at least the "on sale" portion of the long-debated question is that even secret and confidential sales of a patent can disqualify a patent from patentability or invalidate a patented invention that is under subsequent scrutiny.

It seems that the Supreme Court's holding in Helsinn Healthcare perpetuates one of the suggested reasons for the AIA, which was to encourage early filings. If this is the case, then it can be assumed that the "public use" statutory bar will be similarly construed relative to the "on sale" patent statutory bar if the issue is presented to the Supreme Court.

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