I have received advice that the posting of July 4 on the above subject is very dense reading. It is hard to follow but that is a consequence of the complexity of section 102. In fact, the prior version of section 102is just as hard if not harder to read. But it’s worth laboring over this new section because it represents the key criteria for obtaining a US patent.
To assist those who would prefer to have a shorter, though nevertheless rigorous, analysis of the issues relating to patent novelty under the new version of US patent law, the following synopsis has been prepared.
US Patent Law Reform has virtually arrived
The revised US patent law
A new US patent law is virtually certain to come into effect in approximately 18 months. Similar bills have both been passed by the House and Senate. They only have to be reconciled.
This legislation has been promoted as introducing first-to-file criteria into US patent law for granting patents. It does, indeed, do that.
But the patenting requirements of the new law extend far beyond first-to-file which simply addresses the situation where competing applications are filed for the same invention. This law will introduce the concept of “absolute world novelty” as a limit to the grant of a US patent. And, the law will add several remarkable additions to this basic concept.
The key provisions of the House bill that address the referenced novelty requirements are as follows:
Sec. 102. Conditions for patentability; novelty
a) Novelty; Prior Art-
(a) Novelty; Prior Art-
(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; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(b) Exceptions-(1) Disclosures made 1 year or less before the effective filing date of the claimed invention-
A disclosure made 1 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.
These are the provisions that address the absolute novelty requirement. Other similar provisions address the case when two competing applications have been filed. This analysis will only discuss the above novelty requirements except to observe that section 102 (a) (2), above, refers expressly to the case of competing applications.
Basic novelty requirement
The key novelty provision under section 102 (a) (1) bars patenting where:
“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 portion which parallels patenting standards around the world is as follows:
“the claimed invention was….available to the public before the effective filing date of the claimed invention”.
The new law carries-over words from the previous law as following:
“the claimed invention was patented, described in a printed publication, or in public use, (or) on sale …. before the effective filing date of the claimed invention”.
Unlike the previous law, public use and on-sale are not limited geographically to the United States but apply world-wide. The presence of these additional words makes the US law more strict than the laws of other countries which simply require that an invention not have been previously made “available to the public”.
Meaning of “available to the public”
There is no existing legislation under US patent law as to the meaning of “available to the public”. In Europe the disclosure of an invention to a single individual who is under no duty of confidentiality qualifies as making an invention “available to the public”.
However, significant jurisprudence has developed in Europe and elsewhere providing that, for a prior disclosure to qualify as a bar to subsequent grant of a patent, the disclosure must reach the level of being “enabling”. This means it must be sufficient so that others can build the invention after the patent expires.
Effective filing date
All of these novelty provisions are anchored to the “effective filing date” of an application. This means the date of filing in the United States, or the date of filing in another country around the world from which priority filing rights are claimed. Novelty as well as filing priority are both tested as a these dates.
Special Grace period of permitted public use
The new law also includes a one-year grace period that, as an exception to the above absolute novelty requirements, allows an applicant to publicize his/her invention before filing a US patent application. This grace period shelters an application as follows:
102 (b) (1) ….. A disclosure made 1 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;
This provision continues the policy of allowing applicants one year to publicly disclose and test inventions before having to start the patenting process. This supports applicants in providing a better description of their invention. But it does not shelter an application from a pre-priority public disclosure by an independent third party.
The presence of this special “applicant-originating” grace period distinguishes the new US law from patent laws in most countries around the world but parallels similar grace periods now offered in Canada, Australia and New Zealand.
New unique exception to novelty requirement
The new law also includes a provision which is unique amongst patent laws around the world. An exception by way of an additional grace period is provided that goes beyond an “applicant-originating” grace period. Section 102(b) (1) shelters an application in cases where:
102(b)(1) (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 protection that is provided is that “the subject matter disclosed” is to be treated as follows:
102 (b) A disclosure made 1 year or less before the effective filing date of a claimed invention under subsection (a)(1) shall not be prior art to the claimed invention
The effect of this provision is that whatever is disclosed does not qualify as prior art. Any person making a qualifying public disclosure will not have anything that was thereafter publicly disclosed by others count against a subsequent application by the person who first disclosed publicly. This benefit applies, of course, only so long as the subsequent application is made within one year and otherwise is made soon enough to qualify under the other novelty requirements of the new law.
This is virtually equivalent, for patent novelty purposes, to acquiring a US filing date.
This is a remarkable provision for which there is no precedent.
Effect of the new “publicly disclosed” exception
Disclosures by independent third parties are not covered by the self-originating grace period. Normally, if anyone publicly discloses an invention in a way that makes it “available to the public”, then no one else can obtain a patent. However, under the provisions of this remarkable new US innovation, once an inventor, a genuine inventor, has publicly disclosed an invention, then mere public disclosure thereafter by another independent inventor will not thereby automatically defeat the right of the earlier inventor to obtain a patent.
Once an inventor has publicly disclosed an invention, independent third parties will not have the power to prevent the inventor from obtaining a patent. Nor will such third parties be able to obtain a patent themselves. This is because the earlier disclosure combined with the absolute novelty requirement will be a bar against their later application. This preserves the benefit of the “absolute novelty” standard for granting patents: once you disclose an invention, no one who acts later will be able to obtaining a patent for whatever you have disclosed.
Remaining deadline for inventors
The earlier-disclosing inventor will have to file himself before a year is up from any other disclosure, made by himself anywhere. But he/she will not be prejudiced by a third-party disclosure occurring in the intervening period between the earlier inventor’s public disclosure and his filing date.
These provisions do not refer to the “first inventor” in the traditional meaning of the first person to invent worldwide. It refers to the first inventor to take action under the new law and thereby preserve his/her right to obtain a US patent. Such inventor must not have already lost the right to file for a patent because the invention has already been made available to the public by another person who is an independent third party.
What are the consequences of these provisions?
Mere public disclosure of an invention in such a way as to make the invention “available to the public” will prevent any other person who has not yet either made a patent filing or effect a public disclosure from obtaining a valid patent. Such public disclosure will also effectively establish a US filing date for the disclosing inventor.
Key issues to be resolved
There are key questions that remain to be resolved.
What is the extent to which an inventor must publicly disclose an invention in order to, effectively, establish protection equivalent to having a filing date? Is it necessary for this disclosure to be “enabling” in the same sense as Europeans require under the language of making something “available to the public”?
When will a disclosure, for purposes of sheltering a US patent application, be effective based on the audience to whom the disclosure is made? When will a disclosure be a “public” disclosure?
These are issues which will give rise to years of litigation before the ground rules for interpreting these sections are worked-out. Meanwhile, the law will still be substantially workable as these difficult questions will only arise in special cases, and will not apply in respect of the bulk of applications being filed.