Chapter 7A Outline

• Jurisdiction: United States

Chapter 7A

Novelty, No Loss of Right, and Priority [Post-America Invents Act of 2011]

Chapter Explanatory Note

§7A.01 Statutory Text: Post-AIA 35 U.S.C. §102

§7A.02 Sense of Congress and Legislative History for Post-AIA 35 U.S.C. §102

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

[A] Introduction

[B] What §3 of the AIA Retained

[C] What §3 of the AIA Changed

[D] Presumptively Novelty-Destroying Events Under Post-AIA §102(a)(1)

[1] Invention "Patented, Described in a Printed Publication, or in Public Use, [or] On Sale" Before Effective Filing Date

[2] Invention "Otherwise Available to the Public" Before Effective Filing Date

[3] Does the AIA Permit Secret Prior Art?

[a] Introduction

[b] Must a Publicized Sale Disclose the Details of the Invention?

[i] Helsinn Healthcare v. Dr. Reddy's (D.N.J. 2016) (" Helsinn I")

[ii] Helsinn Healthcare v. Teva (Fed. Cir. 2017) (" Helsinn II")

[iii] Helsinn Healthcare v. Teva (U.S. 2019) (" Helsinn III")

[E] Presumptively Novelty-Destroying Events Under Post-AIA §102(a)(2)

§7A.04 Novelty-Preserving Exceptions Under Post-AIA 35 U.S.C. §102(b)

[A] Introduction

[B] Post-AIA §102(b)(1): Shields Against Post-AIA §102(a)(1) Presumptively Novelty-Destroying Events

[1] "(A)-Type" Exceptions

[2] "(B)-Type" Exceptions

[C] Post-AIA §102(b)(2): Shields Against Post-AIA §102(a)(2) Presumptively Novelty-Destroying Events

[1] "(A)-Type" Exceptions

[2] "(B)-Type" Exceptions

§7A.05 Effective Date for AIA §3 "First Inventor to File" Amendments

§7A.06 Common Ownership Under Joint Research Agreements

Chapter Explanatory Note

Chapter 7A of this treatise covers novelty, the definition of prior art, and priority¹ as those topics are defined and analyzed under the Patent Act (35 U.S.C.) as amended by §3 ("First inventor to file") of the Leahy-Smith America Invents Act of 2011 ("AIA").² As detailed below, §3 of the AIA rewrote 35 U.S.C. §102 in its entirety. Generally speaking, the AIA §3 amendments apply to U.S. patent applications filed on or after March 16, 2013.³ If patents issuing from such applications are challenged in federal court litigation, their validity will be assessed under the AIA regime.⁴

Because the AIA §3 ("First inventor to file") changes are just beginning to take effect at the time of this treatise update (2019), few Federal Circuit decisions are available to interpret the section's many points of ambiguity.⁵ Clarification must await disputes to work their way through the courts, although some ambiguities will likely be resolved by implementing USPTO rules or (perhaps) Congressional "clean-up" amendments to the AIA.⁶ Thus Chapter 7A of this treatise is limited primarily to analyzing the as-enacted text of §3 of the legislation and its legislative history. Later updates of the treatise will add discussion of new judicial decisions and agency rules that interpret and apply the AIA's provisions.

Section 3 of the AIA worked landmark changes to U.S. patent law.⁷ Those changes include redefining what counts as prior art by expanding the 35 U.S.C. §102 categories of novelty-destroying events and removing all prior geographic limitations; altering the date on which novelty is assessed so as to focus on the effective filing date of the application or claim in question rather than the invention date; and switching the U.S. from its traditional "first to invent" priority system to a unique "first inventor to file" system (a hybrid of the European first to file regime and certain prior art exclusions based on the traditional U.S. pre-filing grace period of 35 U.S.C. §102(b) (2006)).⁸

These §3 AIA changes generally apply prospectively to patent applications filed on or after March 16, 2013.⁹ Critically, the changes do not apply to the over two million U.S. patents that were already in force on March 16, 2013,¹⁰ nor to pending patent applications filed before March 16, 2013 (or patents issuing therefrom). For decades to come, the pre-AIA version of the Patent Act as addressed in Chapter 7 (and other chapters) of this treatise will continue to apply to millions of U.S. patents and applications. The practical result of the AIA's framework for implementing the "first inventor to file" system and associated changes to novelty and prior art is that the U.S. patent system will operate under a dual regime (encompassing both "pre-AIA" and AIA rules) for thirty years or more following the AIA's September 2011 enactment.

To ensure clarity and demarcation between the "old" and "new" systems, this treatise separately analyzes the AIA-implemented changes pertaining to novelty, prior art, loss of right, and priority in Chapter 7A. The preceding Chapter 7 of this treatise addressed the issues of novelty, loss of right (i.e., "statutory bars"), and priority between rival inventors as those issues are determined under the pre-AIA regime. That regime...