US Patent Law Reform has virtually arrived
With the passage by the House of Representatives on June 23, 2011 of the House version of the patent Law amendment act: “H.R. 1249, the Leahy-Smith America Invents Act“, a new US patent law is virtually certain to come into effect in approximately 18 months. All that has to be done is to reconcile the House bill H.R. 1249 with the Senate bill S 23 which is a relatively standard procedure in these circumstances.
Almost universally, this legislation has been promoted as introducing first-to-file criteria into US patent law for granting patents. It does, indeed, do that. The rationale for adopting this contested alternative to the first-to-invent system is partly to conform US law to the laws of virtually all major countries in the world, and to avoid the complexity of proceedings in which parties with competing patent applications try to show who conceived their invention first.
But the patenting requirements of the new law extend far beyond simply addressing the situation where competing applications are filed for the same invention. This law will introduce the concept of “absolute world novelty” as a key filter for limiting the grant of a US patent.
Although this relatively strict novelty feature parallels patent laws elsewhere around the world, this new novelty standard will prove to be a substantial departure from the prior US patent law. The prior US law limited novelty-destroying activities to offers for sale or incidents of public use occurring in the United States. The only world-wide disclosures limiting the grant of a patent in the United States under the prior law have been descriptions of the invention in a printed publication.
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 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; 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.
(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 of when two competing applications have been filed. This analysis will only discuss the above novelty requirements except to observe that section 102 (a) (2) refers expressly to the case of competing applications.
The key novelty provision is under section 102 (a) (1) which 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 the following words from the previous law, presumably to ensure that nothing can be patented in the future that would have been prohibited in the past:
“the claimed invention was patented, described in a printed publication, or in public use, on sale …. before the effective filing date of the claimed invention”.
The presence of these additional words makes the US law more strict than the laws of other countries. Something could be in public use or on sale and still not yet have been presented in a way that would make the invention “available to the public”. This is a key phrase which will be analyzed further, below.
Both of these 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. Priority cannot be claimed for a date earlier than one year prior to the actual filing date in the United States.
The prior US law included a one-year grace period backdating from the actual US filing date which would shelter an application from both public disclosures made by the applicant and public disclosures made by third parties, so long as the applicant could show a date of invention that was earlier than the date of the third-party disclosure. This has been called a “grace period” because the applicant is not prejudiced by disclosures made during this period, particularly his own disclosures.
The object of providing a grace period is to permit patent applicants to gain experience with their invention, including experience in public use and consultations with others, before having to file a patent application. Patent applications must include a full and “enabling” disclosure that will allow others to produce the invention once the term of the patent grant has expired. This grace period ought to allow applicants to improve the quality of their patent disclosures.
The new law also includes a one-year grace period but it does so in a different form and with a different effect. Similar to a law adopted in Canada in 1989, the one-year grace period of section 102 (b), by way of an exception to the stringency of the above absolute novelty requirement, shelters an application from:
“102 (b) (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;”
This provision continues the policy of allowing applicants one year to publicly disclose and test inventions before having to start the patenting process.
For those located abroad, this one year self-originating grace period extends back from the foreign filing date when a first application for the invention is made available to the public anywhere in the world. Thus foreigners will have the year preceding their priority date plus the priority year to assemble a final patent specification for filing in the United States.
For those located in the United States, this patenting process can be initiated by filing a US Provisional patent application. Such an application only lasts for one year and has to be replaced with a regular US patent filing by the end of the provisional year. This one-year delay parallels the priority year available to foreigners. In both cases, the “story” of the patent disclosure may be amended up until the time of the filing of the final, non-provisional, application.
The presence of this special applicant-originating grace period distinguishes the new US law from patent laws in most countries around the world. It, however, parallels similar grace periods now offered in Canada, Australia and New Zealand. There is a prospect that other countries will follow this initiative and adopt a similar qualified grace period.
The new law also includes a provision which is unique amongst patent laws around the world. 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 key words are “publicly disclosed”. What is publicly disclosed must originate from an inventor named in the application. 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 shall not be prior art to the claimed invention under subsection (a)(1)”
The effect of these provisions is that any person making a qualifying public disclosure will not have anything that was thereafter disclosed count against a subsequent application, 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.
The magic of acquiring of filing date, whether an actual US filing date or a priority filing date, is that anything that occurs after the filing date does not count against the patent application to the extent that there is a description in either of such filings that will support a claim to patent rights. When the above section says that a disclosure that is publicly disclosed by the inventor within the one year prior to an application’s effective filing date does not qualify as prior art, the effect is that whatever has been disclosed in the public disclosure is, effectively, subtracted from post-disclosure publications that would otherwise qualify as prior art. This is the same principle that applies to acquiring filing date.
This is a remarkable provision for which there is no precedent. No other country includes such a provision in their patent laws. This provision was introduced part way through the processing of the third of the four attempts to amend US patent laws that have extended over the prior eight years. The apparent intention was to protect persons such as university professors and others who might disclose their inventions to the public in an oral presentation or through release of samples or a demonstration of an invention from loss of their patent rights. The provision is not limited just to university professors, but the initiative to include this exceptional exemption originated at the instigation of the University community.
Loss of patent rights could occur by a mechanism that would lie outside the self-originating grace period. 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 has publicly disclosed an invention, then mere public disclosure thereafter by another independent inventor will not thereby automatically defeat the right of the first 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. The first inventor will have to file before a year is up from any other disclosure, made anywhere. But they will not be prejudiced by a third-party disclosure occurring in the intervening period before the first inventor’s public disclosure and his filing date.
“First inventor” in this description does not refer to 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 preserves his right to obtain a US patent.
What are the consequences of these rather remarkable US patent novelty requirements, assuming that they will come into force in the form as presently approved?
An advantage of an absolute novelty patenting requirement is that it is not necessary to file a patent application in order to defeat the rights of others to obtain a patent. 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 effected a public disclosure from obtaining a valid patent. The invention must be adequately disclosed to defeat filings by others. But once the standard has been met, there’s no need to file a patent application in order to prevent others from obtaining a patent. This is one of the justifications for adopting absolute world novelty.
There is no existing legislation under US law as to the meaning of “available to the public”. There is a section in the US Patent Office Manual of Practice in Examining Procedure referring to biological deposits in terms of the expression “available to the public”. But generally, this expression has not been judicially defined in the United States. Certainly it has not been defined in the context of the present proposed law.
However, significant jurisprudence has developed in Europe and elsewhere around these words since this language has been adopted in international and regional patent laws since the 1970s. Whether the US courts will follow these foreign precedents remains to be seen. But a key feature of such precedents is 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”. Thus a tractor driven in a parade that has an inventive feature under the cowling does not make the invention available to the public. This will not occur until members of the public can look under the hood and actually inspect the invention to the extent that they are able to understand it. Similarly, an invention offered for sale but not yet delivered cannot be said to have been made “available to the public”. This would apply where the purchaser has not been informed as to the nature of the invention.
Ironically, both of these latter actions will be bars to obtaining a patent in the United States, as they have been bars for the last 175 years. This is due to the retention of the language in section 102 (a) prohibiting the grant of a patent where:
“102 (a) (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;”
Even the granting of a patent in a foreign country does not necessarily disclose an invention. Some foreign patents may be granted in secrecy if they relate to matters of national security. Nevertheless, the granting of a foreign patent in secrecy will defeat patentability in the United States once all of the exceptions, including the one year grace period, have been used-up.
This is an example of where the new United States law is more stringent than most foreign patent laws. It departs from the principle that patents are to be granted in cases where an invention has not yet been made “available to the public”. A confidential offer for sale of an invention will be a bar against all others obtaining a US patent. The inventor will have one year to file. Such a procedure would not defeat the right of a third party to file in Europe.
On the other hand, in Europe, tests have been developed by the courts which have ruled that 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”. Yet, in another case, when photographs of a fold-down staircase were shown to a politician by the manufacturer and photographs of the politician standing before the staircase were published in a local newspaper, it was held that the invention had not been made “available to the public”. This was because features of the invention were not apparent in the mechanism as photographed and, presumably, in the portions of the staircase shown to the politician.
Some careful and deep thought will have to be given by the US courts in developing their standards for giving meaning to the expression: “available to the public”.
The foregoing has addressed the issue of spoiling the ability of others to obtain a patent by making the requisite degree of disclosure. A separate but complementary issue is the extent to which an inventor must publicly disclose an invention in order to, effectively, establish protection equivalent to having a filing date. This requires giving careful attention to the intended meaning of the following words:
“102(b)(1) (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor…”
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”? The word “disclosed” is used in the present US patent law under section 102 (e) whereby applicants are entitled to claim the benefit of anything “disclosed” in a prior US Provisional patent application, if other requirements are met. But throughout the entire existing US statute, the word “disclosed”, although appearing many times, always does so in the context of referring to a document. How much activity, without reducing information to written form, will constitute a disclosure?
Then there is the further issue of the word “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? Disclosures to the family are not public, but what about disclosures at a wedding? Many public disclosures are evanescent. People make statements orally at meetings but no one remembers what was said afterwards. Perhaps a tape recorder may be running but if nobody understood, or were unable to hear, what was being said at the time the statement is made, can it be said that such an event constitutes a case when something was “publicly disclosed”. Can there be a different standard for “publicly disclosed” as opposed to making something “available to the public”?
These are all 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.