It has been more than a decade since, to the relief of many, particularly outside the U.S., the America Invents Act (“AIA”) retired the intricate and somewhat idiosyncratic “first-to-invent” definitions of prior art provided in pre-AIA 35 U.S.C. § 102(a) to (g), for determining novelty, and, as modified in pre-AIA § 103(a) to (c), for determining obviousness.
Though simplified AIA definitions now govern almost all USPTO examination proceedings, the first-to-invent definitions continue to govern the validity of the many currently enforceable U.S. patents that issued from, or claim priority to, U.S. applications filed before 16 March 2013 (“pre-AIA patents”).
Further, because the terms of many pre-AIA U.S. patents extend beyond the default twenty years from the earliest U.S. filing date—in compensation for USPTO and certain other administrative delays—and because U.S. patents can be enforced for up to six years after their expiration, the first-to-invent prior art definitions will continue to be relevant long after 15 March 2033, the default expiration date of the last-filed pre-AIA patents.
For better or worse, anyone who regularly assesses the validity of U.S. patents in sectors where value lies at the end of term, such as pharmaceuticals or medical devices, will of necessity still be familiar with the first-to-invent prior art definitions. However, anyone with less than a decade of experience with U.S. patents, and who works in other sectors or solely in prosecution, will be less familiar with the first-to-invent prior art definitions.
For a given AIA-patent, the identification of reliable first-to-invent prior art, a prerequisite for a reliable validity assessment, can require consideration of multiple, sometimes overlapping, first-to-invent definitions found in pre-AIA § 102(a) to (g) and § 103(a) to (c).
For example, even the commonly encountered first-to-invent definitions, those in pre-AIA § 102(a) and (b), include disclosure in publicly accessible documents, in any language, worldwide, but exclude use, commercial exploitation and public knowledge of the “ready for patenting” invention covered by the pre-AIA patent outside the U.S.
As another example, the first-to-invent definitions in pre-AIA § 102(a), which cover disclosure, public use and knowledge effectively up to one year before the earliest U.S. filing date, and pre-AIA § 102(e), which cover earlier-filed published U.S. patent applications and certain earlier-filed international published applications, include only prior art that did not originate from the inventors of the pre-AIA patent and only then, if dated before the date of “invention” of the pre-AIA patent.
As a result, identification of reliable first to invent prior art for a given pre-AIA patent may be difficult or impossible without access to typically non-public information. Such difficulties are compounded by more than seven decades of still-evolving case law, which sometimes attaches counterintuitive meanings to the first-to-invent definitions in pre-AIA § 102(a) to (g) and § 103(a) to (c). For example, the recognition of secret sales or offers to sell as prior art under pre-AIA § 102(b), an interpretation that has been carried over into AIA § 102. (See Helsinn Healthcare, S.A. v. Teva Pharms. USA, 139 S.Ct. 628 (2019).)
As a result, much prospective first-to-invent prior art is inherently unreliable because it is at risk of exclusion from the first-to-invent definitions of prior art, upon presentation of proof of an earlier date of invention for the pre-AIA patent (“swearing behind”) or that the prospective first-to-invent prior art originated from the inventors of the pre-AIA patent.
It is thus advisable, when assessing the validity of a pre-AIA patent—whether working from the perspective of a potential or accused infringer, a patent owner contemplating patent assertion or a potential purchaser, seller, licensor or licensee—at a minimum, to distinguish reliable from unreliable first-to-invent prior art.
Reliable first-to-invent prior art is essentially that dated more than one year before the earliest U.S. filing date of the pre-AIA patent that meets any of the “statutory bar” definitions in pre-AIA § 102(b)—most commonly, disclosure in publications, including granted patents and published patent applications, worldwide, in any language and, less commonly, public use, sale or an offer to sell, even if confidential, of the “ready for patenting” invention covered by the AIA-patent, solely in the U.S.
Unreliable first-to-invent prior art is typically that which, on its face, did not originate from the inventors of the pre-AIA patent and presumptively satisfies a definition found in either pre-AIA § 102(a)—disclosure in publications, including granted patents and published patent applications, worldwide, in any language or public knowledge or use in the U.S. of the “ready for patenting” invention of the AIA-patent, in the U.S., up to one year before the earliest U.S. filing date of the pre-AIA patent—or in pre-AIA § 102(e)—disclosure in U.S. published applications or PCT applications designating the U.S. published in English, filed before the earliest U.S. filing date of the pre-AIA patent.
If the result of the assessment is that the validity of the pre-AIA patent depends solely on such presumptively unreliable first-to-invent prior art, and if the issue of validity is of sufficient importance, it may be advisable to conduct a more thorough investigation, in an effort to either determine the reliability, or otherwise, of the presumptively unreliable prospective first-to-invent prior art—for example, by identifying an invention date for the pre-AIA patent, as disclosed by the applicant or patent owner during the course of U.S. prosecution or litigation—or locate new items of reliable first-to-invent prior art—for example, first-to-invent prior art that was invented earlier in the U.S., falling under pre-AIA § 102(g)(2).
Such an investigation should involve consideration of all potentially relevant first-to-invent definitions in pre-AIA § 102(a) to (g), as modified by § 103(a) to (c), and include inspection of all potentially relevant public information—at a minimum, the file history of the pre-AIA patent and records of any litigation over the validity of the pre-AIA patent—and, to the extent possible, all potentially relevant non-public information—for example, documentation of events that preceded the earliest U.S. filing date of the pre-AIA patent that may be in the possession of the owner or originator of the pre-AIA patent.
If still in doubt concerning application of first-to-invent prior art to a given pre-AIA patent, it may be advisable to consult one the diminishing number of U.S. patent attorneys with substantial pre-AIA experience.
