Traps for the Unwary Regarding Patent Claim Drafting and Definition of Prior Art Under Leahy Smith

As nearly everyone in the United States Patent World is likely aware of by now, on Friday, September 16, 2011, President Obama signed the patent reform legislation recently passed by Congress. The law, therefore, is legally in force, although different provisions have different effective dates. The overall bill is, of course, extremely complex and has many different of facets.

This post is focused on specific aspects of new 102, which legally has an effective date of March 16, 2013. Even with limiting the topic of this post to new 102, enough complexity is presented that it would not be possible to discuss in any meaningful way all the changes with which one should be familiar. In other words, there are many potential traps for the unwary; however, the two discussed below seem to me to be particularly pernicious.

My first point is that practitioners should be aware, if new 102 applies, some aspects of what qualifies as prior art will likely be opposite common sense expectations of inventors otherwise unfamiliar with nuances of the new provision.

For example, the new provision retains the existing notion of public use and on sale under current law; however, a key difference is that the one year grace period of current law will not be available under new 102 (Another key difference is that activities outside the United States may create a so-called public use or on sale bar under new 102). Therefore, there is a possibility that your clients invention may already be unpatentable in the United States by the time he or she contacts you (such as if a public use or offer for sale even took place the day before he or she consults you). Fact patterns of court decisions that may apply are generally known by skilled patent practitioners, but not the general population or even other types of attorneys. Therefore, many more inventions are likely to be forfeit under new 102.

Most inventors have a common sense expectation that if they do not actually disclose their invention and how it works, then it remains patentable. I am speculating somewhat, but perhaps this expectation is based on how trade secrets typically are understood to operate. Regardless of the basis for it, it is a view that, in my experience, is held widely despite not being entirely legally correct even under current 102. For example, under existing law, a secret commercial use will typically qualify as a public use and an offer for sale will put an invention on sale under the present statute, even if no information about the invention itself was conveyed with the sale offer. These wellestablished principles will continue to apply under new 102.

Public use and on sale are nonetheless well understood legal concepts for most patent practitioners. Some practitioners may, as a result, feel there is not a need for concern under new 102, since in the past they have managed to effectively address these same nuances under existing law. However, again, an important difference is that current law provides a one-year grace period so that, if the inventor has not delayed excessive in
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coming to see you (e.g., consults you within 3-6 months of a public use or offer for sale, although this was not appreciated by the inventor at the time of the public use or offer for sale), then under current law an opportunity remains for a patent application to be filed before the invention is forfeited. Not so with new 102, as previously discussed. (A separate concern in a first-to-file regime, of course, is that as a result of delay, someone else may have beaten the inventor in the race to the patent office.)

If the situation above were not bad enough, in addition, an inventors common sense expectation that he or she should not disclose his or her invention publicly, as suggested above, may actually work to his or her detriment under new 102. For example, under new 102, despite being a first to file system, a first patent application or issued patent that was filed ahead of a second patent application or issued patent, will not be considered prior art under special circumstances. For example, this will occur if, before the effective filing date of the second filed patent or application, the subject matter disclosed by the first filed patent or application had been previously publicly
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disclosed by an inventor, joint inventor, or "another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor." Therefore, under new 102, there may be a legal benefit to the inventor for having made a public disclosure, in particular, within one year of filing the patent application.

The warning here, for the practitioner, is to be aware of these changes due to new 102 and immediately ask your client about possible events that could constitute a public use, an offer for sale or a public disclosure to get the facts and to educate your client so that actions supporting patent claims, such as the disclosure example above, may be separated from actions jeopardizing such patent claims, such as possible bars.

Nonetheless, due to an additional complexity, all might not be lost, even assuming an invention that would have been patentable under current 102 is unpatentable under new 102 and even assuming the patent application is filed on or after March 16, 2013. When new 102 technically goes into force on March 16, 2013, it will still not necessarily
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apply to every patent application filed on or after that date. More particularly, a provision defining the applications to which new 102 applies may provide an out. An important consideration relates to the effective filing date of the application, now a defined term in section 100 of the statute as enacted that also becomes effective on March 16, 2013.

The second point, then, is that it will become critically important for practitioners to immediately attempt to identify which law applies, current 102 or new 102, especially before drafting patent claims.

There are several reasons for doing so. As is typical, determining applicable law allows an evaluation of whether a patent application should be pursued, whether a patent might be expected to issue, once filed, and whether, once issued, such a patent might be expected to be legally enforceable. Additionally, the practitioner will want to identify applicable law so that, through artful patent claim drafting, he or she is able to increase the likelihood of success in all of these endeavors.
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However, even more interesting, a practitioner will not want to miss an opportunity to choose the law that will apply, if such a choice is available. That is, one might view every application filed on or after March 16, 2013 as being subject to a sort of choice of law type provision. It might be possible to, in effect, opt into the current law under 102 and 103, even for a patent application filed on or after March 16, 2013. This is something to not be overlooked not only because of the expanded definition of prior art under new 102, but also the expanded definition of prior art under new 103. In particular, for new 102 and new 103, the meaning of prior art is the same; however, under current law, what qualifies as prior art under 103 is much narrower than what qualifies as prior art under 102. Therefore, under the new law, what qualifies as prior art has been significantly expanded for new 102 and for new 103.

One might consider, whether, as a matter of course, to include a priority claim to an application filed before March 16, 2013 if the requirements for making such a priority claim are arguably satisfied,
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and put off to a later time deciding whether to ultimately drop the priority claim.

There are several reasons for considering this strategy. PTO regulations provide a limited time for making a priority claim. See 37 CFR 1.78. However, if a priority claim that was made is later dropped, which may, for example, be done to strategically increase the term of the patent that will ultimately issue, current 102 and current 103 will still apply under the terms of the new statute.

In pursuing this strategy, it would therefore be prudent for practitioners to draft some claims with current 102 in mind and some claims with new 102 in mind to provide adequate written description support for either option.