Chapter §7A.03 Prior Art Under Post-AIA 35 U.S.C. §102(a)

• Jurisdiction: United States

§7A.03 Prior Art Under Post-AIA 35 U.S.C. §102(a)

[A] Introduction

As amended by the AIA, 35 U.S.C.A. §102(a) (effective March 16, 2013) (hereafter "post-AIA §102(a)" or simply "§102(a)") enumerates six types of novelty-destroying events. These events make up the catalog or universe of "prior art" for purposes of analyzing an invention's novelty²⁴ and/or its nonobviousness.²⁵

The preamble language of post-AIA §102(a) provides that "[a] person shall be entitled to a patent unless. . . ." This language, carried over from the pre-AIA version of §102, indicates that the initial burden of disproving novelty during examination of a patent application continues to rest with the government—the USPTO.²⁶

To establish that novelty of a claimed invention has been destroyed—in other words, that a patent is not available because prior art anticipates the claimed invention—the statute requires that the USPTO establish that before the effective filing date of the claimed invention,²⁷ the invention was already (1) "patented," (2) described in a printed publication," (3) "in public use," (4) "on sale," (5) "otherwise available to the public," or (6) described in a U.S. patent or published patent application naming another inventor. Each of these six novelty-destroying events is discussed in further detail below.

The AIA is not absolute in its requirement for novelty as of a claimed invention's effective filing date. The occurrence of any of the six §102(a) events before the effective filing date presumptively destroys novelty (i.e., anticipates the invention, assuming that the strict identity standard for anticipation is satisfied²⁸). The claimed invention's novelty nevertheless may be preserved (in other words, the presumptively-established §102(a) prior art may be removed) if one of the "exceptions" or shields of 35 U.S.C.A. §102(b) (effective March 16, 2013) (hereafter "post-AIA §102(b)" or simply "§102(b)") applies.

The post-AIA §102(b) exceptions are discussed separately below.²⁹ Very generally, the §102(b) exceptions operate in somewhat analogous fashion to "grace period" events under the pre-AIA regime.³⁰ Hence the post-AIA U.S. Patent Act is not a European style "absolute novelty" system, despite Congress's stated intent to "promote harmonization of the United States patent system with the patent systems commonly used in nearly all other countries throughout the world with whom the United States conducts trade and thereby promote greater international uniformity and certainty in the procedures used for securing the exclusive rights of inventors to their discoveries."³¹ Rather, the post-AIA U.S. Patent Act is a unique hybrid that retains many aspects of the pre-AIA regime but jettisoned many others. The following subsections explore what the AIA kept and what it discarded.

[B] What §3 of the AIA Retained

As amended by the AIA, 35 U.S.C.A. §102(a) (effective March 16, 2013) (hereafter "§102(a)" or "post-AIA §102(a)") merges into a single statutory subsection several aspects of the pre-AIA versions of 35 U.S.C. §§102(a) and (b). For example, novelty is presumptively destroyed under post-AIA §102(a) if any of the following four events occur before a particular date: the invention was "patented," "described in a printed publication," "in public use," or "on sale." Novelty destruction (i.e., anticipation) based on the invention having previously been "patented" or "described in a printed publication" was recognized in pre-AIA §§102(a) and (b).³² Loss of right to patent based on the invention having previously been "in public use" or "on sale" was recognized in pre-AIA §102(b).³³

Moreover, each of these four novelty-destroying events (i.e., "patented," "described in a printed publication," "in public use," and "on sale") has a robust history of case law interpretation.³⁴ Because Congress used well-recognized, common law-defined terms in drafting the AIA, it is reasonable to assume that Congress intended those same definitions should continue to govern the analysis of novelty under the post-AIA regime.³⁵

[C] What §3 of the AIA Changed

Section 3 of the AIA implemented numerous notable changes in U.S. patent law. Most significant is the manner in which the United States will determine priority between two (or more) rival inventors claiming a given invention. The AIA switched the United States from its historic "first to invent" system³⁶ to a "first inventor to file" system (characterized by Congress as more in keeping with international standards³⁷). In implementing the change, the AIA eliminated the statutory bases for interference practice, §102(g)(1) and §135 of the pre-AIA Patent Act, with respect to patent applications filed on or after March 16, 2013.³⁸

Ironically (given the importance of this change), the post-AIA §102 does not explicitly set forth a first inventor to file standard. Rather, the first inventor to file standard is implicit in the language of post-AIA §102(a)(2).³⁹ Nor is the first inventor to file standard absolute; it is subject to three important exceptions under post-AIA §102(b)(2) as detailed infra.⁴⁰

Another AIA change of primary import is the timing for determining novelty. Pursuant to the AIA, the novelty of a claimed invention will be assessed under 35 U.S.C. §102 as of the invention's "effective filing date."⁴¹ Under the pre-AIA §102, novelty was assessed at the time of the invention's "invention date" rather than as of the corresponding patent application's filing date.⁴² Nonobviousness of an invention under pre-AIA §103 was likewise assessed "at the time the invention was made."⁴³

Although before the AIA, the USPTO treated an applicant's filing date as her presumptive invention date under a constructive reduction to practice theory, the applicant could potentially antedate (or "swear behind") and thereby remove certain prior art references cited by the agency in anticipation and/or obviousness rejections. Antedating a prior art reference required proving an earlier date of invention than the effective date of the reference. In the USPTO, antedating was accomplished in accordance with Rule 131 (i.e., 37 C.F.R. §1.131);⁴⁴ in litigation challenging the validity of an issued patent, a similar procedure was followed.⁴⁵ Under the AIA, however, antedating or "swearing behind" a prior art reference is no longer possible. This is because the concepts of "invention date" and priority based on earlier invention date are not part of the post-AIA 35 U.S.C. §102 framework.

A third AIA-implemented change of much importance is the removal of numerous geographic limitations on §102 prior art. Under the pre-AIA regime, "know[ledge] or use[] by others" of a claimed invention had to have occurred "in this country" to count as novelty-destroying prior art.⁴⁶ Placement of an invention "on sale" or "in public use" only created a loss of right to patent if the activity had occurred "in this country."⁴⁷ The prior making of an invention only counted as novelty-destroying prior art if the invention had been "made in this country."⁴⁸ In contrast, there are no geographic limitations in the post-AIA §102(a)(1).⁴⁹ Thus, for example, pre-effective filing date sales of a claimed invention anywhere in the world will potentially destroy novelty.

One geographic limitation is retained by the AIA, however—descriptions of a claimed invention in another's earlier-filed application are prior art only if the "another" ultimately obtains a U.S. patent or the "another's" application is published in accordance with U.S. patent law. Under the pre-AIA regime, descriptions of a claimed invention in another's patent or published application only counted as novelty-destroying prior art if the "another's" patent or published application was "filed in the United States."⁵⁰ This domestic connection is effectively retained by the AIA (although stated in different words). Under post-AIA §102, the novelty-destroying description must still appear in "a patent issued under section 151 [of 35 U.S.C.]" or in "an application for patent published or deemed published under section 122(b) [of 35 U.S.C.]."⁵¹

Although the description being relied on as a prior art reference must ultimately appear in a U.S. patent or application published in accordance with U.S. patent law to qualify as post-AIA §102(a)(2) prior art, there is a different AIA-implemented geographic change of note in this context. Before the AIA's effective date, any earlier foreign filing date to which the U.S. patent or published application being relied on as prior art may have been entitled under the Paris Convention's right of priority was ignored under the judicially created Hilmer rule.⁵² The AIA repealed the Hilmer rule.⁵³

To see the impact of abolishing the Hilmer rule, consider a hypothetical German inventor who first files a patent application directed to her invention in the German Patent Office in 2014 and within one year files another application for the same invention in the USPTO, properly claiming for her U.S. application the Paris Convention right of foreign priority under 35 U.S.C. §119(a). Assume that the German and U.S. applications are identical in terms of the invention's disclosure (setting aside any language translation issues). The U.S. application is published at 18 months after the 2014 German priority date and thereafter a USPTO examiner cites the U.S. application's description of the invention as prior art against another patent applicant under post-AIA §102(a)(2). The AIA provides that the prior art effective date of the invention's description in the German inventor's published U.S. patent application will be its 2014 German filing date.⁵⁴ Pre-AIA, the Hilmer rule would have limited the effective date of the published application's description to its later U.S. filing date.⁵⁵

The AIA removed geographic limitations in yet another way. Evidence relied on pre-AIA by a U.S. patent applicant attempting to swear behind a prior art reference, or relied on by an...