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The Expansion of the Scope of Prior Art Provides Another Reason to File Quickly

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The Leahy-Smith America Invents Act (AIA) broadens the scope of prior art that can be used to reject claims of a patent application or to invalidate claims of a patent.  Under the current statute, a prior sale, commercial use, or public disclosure not otherwise published made in a foreign country could not (and cannot through March 16, 2013) be used as prior art unless the foreign sale, use, or disclosure appeared in a publication, patent, or patent application. The new law, which includes a revised 35 U.S.C. § 102, expands the scope of prior art to make it more consistent with patent laws in most foreign countries by removing the limitation that a prior sale, commercial use or public disclosure must be domestic to constitute prior art. Accordingly, the new law extends available prior art to include any subject matter that is publically available in the world prior to the filing date of the application. This new scope applies to all applications with an effective filing date on or after March 16, 2013.

Naturally, the effect on applicants and practitioners is that the expanded scope of prior art may make it more difficult to obtain or enforce a patent. To the extent a use, sale, or other public disclosure is documented in a foreign country, it can be used to reject a patent application or invalidate a patent. While it remains to be seen what evidence of a foreign sale, use, or other public disclosure will be sufficient to rely upon as prior art, it is anticipated that this type of art will more likely be relied upon by a defendant in patent litigation because, at least in the near term, it will likely be difficult for an examiner to obtain and verify evidence of such a foreign disclosure. The examiner’s resources in this context are limited, particularly in light of the time constraints under which he or she typically operates.

One way in which examiners can be made aware of foreign disclosures, of course, is through the applicant and practitioner’s duty of disclosure. The expanded scope of prior art under the new law will require care by applicants and practitioners to properly cite in an Information Disclosure Statement any sales, uses, or other public disclosures not otherwise published in foreign countries that could affect the patentability of the application. The impact on practitioners and applicants in this regard is anticipated to be minimal because an applicant’s own sale, use, or public disclosure in a foreign country will often be in a country in which the applicant is also seeking patent protection. Thus, because most other countries do not allow a one-year grace period between disclosures and patent application filings, it is anticipated that foreign sales, uses, or other public disclosures by an applicant will typically not affect the patentability of the applicant’s United States patent application.

While the expanded scope of prior art may have only a minimal impact on Information Disclosure Statement practices, it may have a more significant impact on actions taken by applicants and inventors in foreign countries prior to filing a patent application.  Previously, sales, commercial uses, and other public disclosures not documented in a patent or printed publication in foreign countries did not qualify as prior art, and thus applicants and inventors could make sales in foreign countries or present at a conference in a foreign country without distributing any published materials without affecting their patent rights in the United States.  Not anymore.  Applicants should take care not to make any such public disclosures if they desire to prevent their one year clock for filing a patent application in the United States from beginning to tick.  Applicants, such as universities and hospitals in particular, should ensure their inventors do not make public disclosures at conferences, regardless of location, without first filing for patent protection or filing within the one year grace period afforded by the new U.S. “first-to-file” system.  Even if an inventor is planning to attend a conference in a foreign country but not formally present at the conference, applicants should make sure the inventor is aware of the consequences of making an unintended public disclosure during the conference because such a disclosure could impact the applicant’s patent rights.

Because the scope of prior art does not expand until March 16, 2013, the effect of this expansion on various practices is not yet fully vetted.  For example, at this time it does not appear that the expanded scope of prior art will apply to pre-issuance submissions, as the relevant provisions in the AIA refer only to the submission of patents, published applications, and printed publications. Thus, third parties aware of a foreign use that might serve as prior art appear to have to wait until after a patent has granted to challenge it in a post-grant review proceeding or litigation.

Overall, the changes in the scope of prior art, along with other provisions of the AIA, provide further incentive to file patent applications as soon as possible so that applicants can limit the possible universe of prior art that might be applied to reject the application or invalidate the resulting patent.

This advisory was prepared by Nutter’s Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

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