As noted earlier, the two congressional versions of the America Invents Act, S. 23 and H.R. 1249, both seek to eliminate the ability to ante-date or “swear behind” prior art dated within a year of an application’s filing date.
Disclosure v. Public Use or Sale
That should still leave the current grace period intact for public disclosures or commercial activity by the inventor, right? Actually, no. The bill that passed the Senate provides an exception to what is considered prior art for “disclosures” of the invention by the inventor (or someone who obtained or derived the invention from the inventor) within one year prior to filing the patent application. There is no such grace period, however, for public uses or commercialization activities such as sales or offers for sale. Thus, an offer for sale one day prior to filing a patent application would be a bar to obtaining a patent.
Isn’t a public use or sale a “disclosure”? Actually, Supreme Court and other Federal court precedent dating to 1829 provide that a public use or even a secret sale prior to filing a patent application will defeat the applicant’s ability to obtain a patent. The Federal Circuit has also followed this precedent.
The saving grace (pun intended) for inventors under current law is that § 102(b) specifically recites that public use or sale is only a problem if it takes place “more than one year prior to the date of application for patent.”
This seems to have been an oversight on the part of the Senate, as demonstrated by some of the legislative history during the debate prior to passage, but is most readily demonstrated by remarks from Sens. Patrick Leahy (D-VT) and Orrin Hatch (R-UT) after the bill had passed the Senate. See 157 Cong. S1496 (March 9, 2011). Although these remarks probably won’t have any affect on the plain language of the bill, perhaps Sens. Leahy and Hatch were signalling the House to fix this issue in its version of the bill.
Unfortunately, when the bill was introduced in the House, it contained the same language that was included in the Senate bill. No problem. The issue was addressed by Judiciary Committee Chairman Lamar Smith (R-TX) in his Manager’s Amendment. His amendment sought to basically overrule the earlier court decisions and change the definition of prior art in the bill from “. . . in public use, on sale, or otherwise available to the public” to “otherwise disclosed to the public.” The exceptions for inventor’s activities within one year of filing were amended to be consistent with this and a definition was added to make clear what was intended by ”disclosed to the public.”
(o) IMPLEMENTATION BY THE PATENT AND TRADEMARK OFFICE.–In any guidelines for the examination of patents addressing whether a disclosure to the public has been maded under section 102 of title 35, United States Code, as amended by this section, the Office shall use the public accessability criteria employed by the courts in addressing whether a disclosure constitutes a printed publication under section 102 of title 35, United States Code, as in effect on the day before the date of the enactment of this Act. Such public accessability criteria shall be used regardless of the manner in which the disclosure resulted in the subject matter disclosed being known or used.
Thus, the Manager’s Amendment sought to fix this issue so that any public use, sale, or other public disclosure by the inventor within one year of the application’s filing date would not preclude him from getting a patent on the invention. This would restore the grace period as it currently exists for inventor activities.
Judiciary Committee Action
As I noted earlier today, however, Rep. Zoe Lofgren (D-CA) introduced an amendment that specifically undoes the fix to the grace period in the Manager’s Amendment. Rep. Lofgren’s change passed the Judiciary Committee by voice vote.
Do all members of the Committee really intend for a public use or sale by an inventor one day prior to the application filing to defeat his ability to obtain a patent? Or is something else going on here? Will this section be fixed on the House floor or in conference committee?
To be sure, there are better and easier ways to fix this provision than that proposed in the Manager’s Amendment. Hopefully, Congress restores the grace period prior to final passage of the bill.