Under the America Invents Act (AIA), the United States changed from a first-to-invent regime to a first- inventor-to-file regime. However, a number of other nuanced changes also occurred with the regime change. One change involved whether secret sales and secret processes used to manufacture a commercialized product for more than one year could be patented.
Under pre-AIA patent laws, public sales, public offers for sale and public (non-secret) processes used to manufacture a product being offered for sale for more than one year cannot be patented.
If commercialization of the invention occurred for more than one year regardless if the commercialization was secret, pre-AIA patent laws prohibited the patenting of that commercialized process or machine even if such use was secret. MPEP 2152.02(c) explains that an inventor’s own prior commercial use, albeit kept secret, may constitute a public use or sale under pre-AIA 35 USC 102(b) barring him from obtaining a patent.
The policy or rationale for the public use and on sale bars was to allow for the widespread disclosure of new inventions to the public via patents as soon as possible and to prevent the inventor from commercially exploiting the exclusivity of his or her invention substantially beyond the statutorily authorized period. See MPEP 2133.03.
Under pre-AIA 35 USC 102(b), any invention on sale or in public use for more than one year was barred from patentability. This included secret sales, secret offer for sales and secret uses of processes used to manufacture products (see MPEP 2133.03(c)(III)) that are offered for sale.
The AIA may have reversed this long-standing policy and law. Secret sales, secret offers for sales and secret uses of processes used to manufacture products and machines may be patented under the AIA. This seems to contradict the basic policy reasons for the public use and on sale bars to patentability. Nevertheless, the guidance provided by the USPTO appears to suggest such a scenario.
Please be advised that the explanation provided below is related to my understanding of how the United States Patent and Trademark Office (USPTO) has interpreted the AIA laws. The final arbiter of how the AIA laws will be interpreted is the judicial branch (district courts, Federal Circuit and United States Supreme Court), not the USPTO which is a part of the executive branch of government although the courts on many occasions give the USPTO as the administrative body deference on interpretation of patent laws. Nevertheless, the judiciary has not yet rendered an opinion in this regard and thus the law is not settled as to whether secret sales, secret offer for sales and secret uses of processes used to manufacture products that are offered for sale for more than one year can be patented.
Under the AIA 102, the patent statute was changed to recite that a patent cannot be obtained if “the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effect the filing date of the claimed invention.” (emphasis added). The AIA adds a catchall prior art category that can preclude an inventor from securing a patent on the invention. That catchall prior art category is embodied in the language “otherwise available to the public”.
Final rules for the AIA relating to the first inventor to file provisions was published in 78 Fed. Reg. 11059, February 14, 2013. Page 11062 of the final rules state
“residual clauses such as “or otherwise” or “or other” are generally viewed as modifying the preceding phrase or phrases. Therefore, the Office views the “or otherwise available to the public” residual clause of the AIA’s 35 U.S.C. 102(a)(1) as indicating that secret sale or use activity does not qualify as prior art.” (emphasis added).
The USPTO interprets the residual clause as modifying the meaning of the words public use and on sale.
Regarding the on sale bar, MPEP 2152.02(d) states that:
The “or otherwise available to the public” residual clause of AIA 35 USC 102(a)(1), however, indicates that AIA 35 USC 102(a)(1) does not cover secret sales or offers for sale.
Simply put, secret sales and offers for sale are no longer prior art at least for the USPTO in examining patent application. At least for the on sale bar, the USPTO has been very clear in its guidance but not for the public use bar.
Regarding the in public use bar, MPEP 2152.02(c) explains that:
The public use provision of AIA 35 USC 102(a)(1) thus has the same substantive scope, with respect to uses by either the inventor or third-party, as public uses under pre-AIA 35 USC 102(b) by unrelated third parties or others under pre-AIA 35 USC 102(a).
This sentence states that the public use bar under the AIA is coextensive with pre-AIA public uses in relation to unrelated third parties and others. Hence, an understanding of how pre-AIA law relating to public use by unrelated third parties and others needs to be undersood.
The MPEP makes a distinction between (1) activities of the inventor and (2) the activities by third party unrelated to the inventor for pre-AIA situations. MPEP 2133.03(a)(II)(C) states that a non-secret use by a third-party of a secret machine or process used to make a product sold to the public is a public use and will bar everyone from obtaining a patent. However, the third party’s use of the secret machine or process used to manufacture a product sold to the public is not a public use if the details of the inventive process are not ascertainable from the products sold or displayed and the third party is kept the invention as a trade secret.
In support of the distinction drawn by the MPEP, Section 2133.03(c) of the MPEP states that:
“sale of a product made by the claimed process by the patentee or licensee would constitute a sale of the process within the meaning of pre-AIA 35 USC 102(b). D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, 1147-48, 219 USPQ 13, 15-16 (Fed. Cir. 1983)(Even though the sale of a product made by claimed method before the critical date did not reveal anything about the method to the public, the sale resulted in a “forfeiture” of any right to a patent to that method)” (emphasis added).
Accordingly, pre-AIA 102(b) treated secret uses and offers for sale differently for third parties and inventors. Secret uses of machines and processes to manufacture a product was a bar to a patent when the use was by the inventor but not a bar to a patent when the use was by a third party.
As stated above, the public use provision of the AIA for inventors is coextensive with the public use provision based on pre-AIA 102(a) for unrelated third parties and others. In this regard, pre-AIA 102(a) public use provision does not appear to consider secret uses of processes and machines for the manufacture of a product sold to the public by third parties as prior art to an inventor seeking a patent.