Secret Prior Use after the AIA Patent Reform

We’re closing in on the one-year anniversary of the AIA’s full implementation on March 16, 2013. Though some portions of the law have been in place for more than a year, there is still a great deal of debate about how the new law will be interpreted. A few months ago, I wrote about the disagreement about how a secret offer for sale should be treated under the new rules. Now, I’ll discuss the disagreement in how a secret use of a process is treated for prior art purposes.

As a review picking up from the last discussion, the AIA changed the way prior art and potentially patent-barring disclosures are defined. One provision states that, with exceptions, the invention is not patentable if it “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 “otherwise available to the public” phrase seems to indicate Congressional intent that the disclosure must be a public one, and thus secret uses behind company walls would not jeopardize the novelty of the invention.

The Patent Office has adopted this position, noting that “The legislative history of the [law] indicates that [the prior art provision] does not cover non-public uses or nonpublic offers for sale.” Many practitioners and professional associations agree, including the American Intellectual Property Law Association and the Intellectual Property Law Section of the ABA.

Others disagree, however, because there is a long line of case law that lays out the tremendous public policy reason for recognizing secret uses as prior art. Specifically, a patent applicant should be prevented from commercializing a product under a patent for 20 years and then, patenting the process for making that process as well, effectively extending the patent protection beyond the statutory period and denying the public from using and building from the invention.

Unfortunately, it will be many years until this ambiguity is resolved, because it will likely require a court – an appeals court – to decide the issue. That requires that a case be tried in a district court, which requires there to be an infringement claim based on a patent, which requires a patent application to have been filed after March 16, 2013. With the delays at the Patent Office in issuing patents, and the delays through court, it could be some time before we know how secret prior uses will be handled.

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