Rewriting the America Invents Act

June 17, 2014

Lexology

William Schultz
Joe Dubis

The America Invents Act (AIA) reshaped the intellectual property landscape. As we approach the opening of Satellite Offices on September 16, 2014, it’s time to review some of the elements of AIA that have been implemented and see what is truly different, and what amounts to a simplification of the patent code. The first topic is section 102.

The AIA rewrote the rules regarding what constitutes an anticipatory reference in 35 U.S.C. section 102. In the pre-AIA version, section 102 had elements (a)-(g) that parsed the definitions of prior art into distinct subsections (i.e. work of another, work by the inventor, patented in another country, etc.). The AIA version of section 102 collapses many of these subsections into two main subsections. AIA section 102(a)(1) describes prior art references that may be thought of as public events. Such references include publications, public use, and the sale of the product. AIA section 102(a)(2) describes prior art references that may be thought of as secretive events. Such references include another person filing a patent application that will become public at some later date. AIA section 102(b-d) details particular exceptions to the section 102(a) definitions of prior art. Such exceptions include disclosing activities from a joint research activity and the presence of a previously filed application with an earlier effective filing date.

On the surface, it may seem like AIA section 102 is completely different than the pre-AIA section 102. From a prior art analysis standpoint, using the AIA section 102 may take some getting used to if one was familiar with the pre-AIA section 102(a-g) subsections. However, AIA section 102 is not completely foreign. The AIA version of section 102 has maintained the critical prior-art-creating events such as being described in printed publications, being in public use, and being on sale. For the most part, these standards are identical to the well-developed standards utilized in pre-AIA section 102. A minor exception is that there is some uncertainty regarding the “experimental use” exception that existed under pre-AIA section 102.

While major concepts of pre-AIA section 102 have been retained in AIA section 102, two notable elements have not been retained in the newer version. First, the element “known or used by others” has been dropped from the AIA section 102 language. This language was found unnecessary because of courts’ expansion of what constituted an adequate description in a given publication. Second, the element “in this country” was dropped. This simplification of the patent code removed the, at times tedious, consideration of where particular events occurred. Under AIA section 102(a), all prior art events may be used as prior art regardless of the location of the publication, the use, or the sale.

In time, AIA section 102 may seem as familiar as pre-AIA section 102 once did. In the meantime, we are left with recognizing the old elements that remain and appreciating the simplifications made by dropping past elements.

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