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December 06, 2018


Hey Kevin,

I'm frankly astounded by the advocate for Helsinn trying to argue at the outset that the meaning of "on sale" prior to the AIA (Abominable Inane Act) meant only public sales. Justice Kavanaugh was absolutely correct to jump on that mischaracterization, especially in view of Metallizing Engineering (authored by Judge Learned Hand).

The key issue here is what does "otherwise available to the public" mean, and does it change the prior view of what constitutes an "on sale" bar to the INVENTOR as to whether to whether that activity is public or private (e.g., under an agreement involving confidentiality and involving only the party/parties to that agreement).

I do agree with Justice Kavanaugh that "otherwise available to the public" was "a terrible clarification" in terms of the wording (just one, of many, problematical wording issues in the AIA), but I wouldn't necessarily agree with his assessment that this wording didn't reflect Congress's intent to change the meaning of "on sale" as it relates to private versus public sales by the inventor. In that regard, I would suggest considering Joe Matal's "A Guide to the Legislative History of the America Invents Act: Part I" and in particular page 478, footnote 280 which quotes a statement by Senator Orrin Hatch as to the meaning of "otherwise available to the public":

To the extent that nondisclosing Metallizing Engineering uses are deemed to be outside the reach of the word “disclosure,” Senators Leahy and Hatch’s emphasis on “parallelism” and complete coverage in § 102(b) for all that is prior art under § 102(a) simply confirms the understanding that prior art under the AIA will be limited to what is available to the public. Thus, secret nondisclosing activities will not become prior art in the first place.

Note further that, at 450 of Matal's Guide, that the term "prior art" also refers to activities by the inventor, and that "[i]n light of the AIA’s repeal of all 'loss of right to patent' provisions based on secret activities from § 102, those words have been removed from the title of § 102." In other words, instead of being a "bar," the AIA has dispensed with that concept and instead considers whether or not the inventor's activities constitute "prior art." So the argument can be rightfully made that the AIA intended to remove such a private sale by Helsinn that does not "otherwise" make the claimed invention "available to the public." Again, the wording in the AIA in this regard could have been stated more clearly, but the legislative history, as reflected in Matal's Guide suggests Helsinn's confidential sales agreement shouldn't be treated as "prior art" under new 102(a) relative to the inventor, and therefore didn't invalidate Helsinn's patent.

The EPC (1973) in Art 54(2) defined the prior art as:

"The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application."

and since then there has been no significant difficulty assigning meaning to the words "made available".

Decades later, the AIA, in its shift to join Europe in a First Inventor to File statute, adopted the identical phrase "made available to the public". Coincidence, or what?

In the oral argument, did anybody make a point of the patent "bargain", the quid pro quo. What do you get a patent for? Why, in return for making an enabling disclosure available to "the public". If the public already knows, you've lost the basis of your request for a patent. Do the Justices "get" that point?

Did anybody make the point that moving to First to File is revolutionary, a game-changer that renders it foolish to i) delay filing at the PTO and ii) filing on anything less than a fully enablig disclosure. The consequence of failing to meet one or both of these requirements is that the other fellow will get an enforceable patent and will then successfully enforce it against you. Take it from me: the move to FtF takes much of the sting out of old anxieties, about enjoying more than 20 years of exclusivity, about having your cake and eating it too. Did anybody point that out to the Justices?

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