One of the most significant changes of the America Invents Act ("AIA") was the change to the novelty requirements under 35 USC 102. Since its enactment, most practitioners interpreted 102 as allowing for a 1-year grace period for both disclosures and commercial activities of the inventor. A Supreme Court decision last week has created uncertainty for this interpretation.
The relevant portions of 35 USC 102 are as follows:
(a) Novelty; Prior Art.—A person shall be entitled to a patent unless—
(1) the claimed invention 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; . . .
(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.— A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
The issue before the Court in Helsinn was whether a private sale triggers the start of the 1-year grace period, more specifically, whether the phrase "or otherwise available to the public" of 102(a) should be interpreted to modify all of the classes of activities that precede it -- "patented, described in a printed publication, or in public use, on sale." Stated another way, the patenting, publication, and public use bars all result the invention being available to the public. In Helsinn, the patent owner argued that the phrase "otherwise available to the public" compelled the holding that "on sale" activities must also be public to trigger the statutory bar. The Supreme Court disagreed, holding that the language of the statute and the legislative history were insufficient to evidence a clear intent to change the scope pre-AIA on sale bar, included both private and public sales activities. Thus, the Helsinn decision arguably resurrects the pre-AIA separation of the statutory bars into two categories: public disclosures (patented, publication, in public use) and commercialization (on sale).
This is significant because the 1-year grace period "exceptions" set forth in 35 USC 102(b) are limited to "disclosures." Under Helsinn, on sale activity under 102(a) need not be publicly disclosed. This raises the possibility that a court could conclude that on sale activities are not "disclosures" for purposes of 102(b). If not, then the 1-year grace period of 102(b) would not apply to sales or offers for sale.
To be clear, this issue was not part of the Court's holding in Helsinn. Until this issue is resolved by the courts (or a legislative amendment), however, best practice dictates, whenever possible, filing an application prior to any offers for sale or sales of a product embodying the invention.