The America Invents Act (“AIA”), which became fully effective on March 16, 2013, has fundamentally changed U.S. patent law. Some of the most important of these changes relate to the scope of prior art available under 35 U.S.C. § 102. The “prior art” is the body of earlier-disclosed information that can be cited against a patent application by the U.S. Patent and Trademark Office (“USPTO”).
Specifically, under pre-AIA Section 102(a), a person was entitled to a patent unless:
the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent. (emphasis added).
By contrast, post-AIA Section 102(a)(1) now states that a person shall be entitled to a patent unless:
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 . . . . (emphasis added).
Although it will be some time before patent practitioners receive clear judicial guidance on the proper scope of post-AIA Section 102, the literal wording of the statute and recent guidelines issued by the USPTO are informative.
For example, the omission of the phrase “in this country” from the new Section 102(a)(1) opens the scope of available prior art to anywhere in the world. Practically, this means that a claim of priority to an application anywhere in the world could create an effective filing date for a prior art reference.
Additionally, the term “otherwise available to the public” encompasses written as well as oral disclosures. Coupling the “otherwise available” term with the “anywhere in the world” concept could make even oral disclosures in foreign languages available as prior art.
Last, the USPTO has explained that it views the phrase “otherwise available to the public” as indicating that secret sales and use do not qualify as prior art. Consequently, longstanding trade secrets are no longer considered prior art and are in fact patentable under the new regulations, provided they meet all other criteria for patentability.