Common terms under the 1952 Act and the America Invents Act
The first-inventor-to-file (“FITF”) system under the America Invents Act (“AIA”) retains much of the verbiage used in the current Patent Act. For example, the FITF system retains terms such as “patented,” “printed publication,” “public use” and “on sale.” Under the FITF system, if the claimed invention was patented, disclosed in a printed publication, in public use or on sale anywhere in the world before the filing of the inventor’s patent application, then no patent shall be granted to the inventor. Each of these terms has already been litigated and defined through case law under the current Patent Act. For example, the on-sale bar under the current act includes offers for sale regardless of whether the offer was made in private. The expectation is that the current legal definition for “on-sale” and the other similar terms will flow through to the AIA.
Potentially different meanings
However, this may not always be the case. At least one other person has implied that the “on sale” language under the AIA excludes secret offers for sale as prior art based on statutory construction and legislative history of the AIA. Expect to see litigation as to whether secret offers for sale are deemed prior art under the AIA.
Expect any new language to be litigated
The FITF system also adds new language in the form of a catch all phrase which bars the grant of a patent if the claimed invention was “otherwise available to the public” before the filing of the patent application. In other words, even if the claimed invention is not in the form of a patent, printed publication, public use or on-sale (i.e., offer for sale) but was “otherwise made available to the public” before the filing of a patent application by the inventor, then such public availability shall bar the grant of a patent to the inventor. Expect to see litigation as to what is meant by “otherwise made available to the public” standard.
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