Prior Art Categories

AIA § 102(a)(1) defines prior art as any disclosure before the effective filing date: STATUTORY TEXT — § 102(a)(1): 'A claimed invention cannot be patented if 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'; THE FIVE CATEGORIES OF § 102(a)(1) PRIOR ART: (1) PATENTED: any US or foreign patent that issued before the effective filing date; even a now-expired patent remains prior art; the entire patent (specification; drawings; claims) can be used as prior art; (2) DESCRIBED IN A PRINTED PUBLICATION: printed publications are the broadest category; includes patents; journal articles; conference papers; theses; textbooks; product manuals; website content; press releases; online discussions; the key question is whether the reference was 'sufficiently accessible to the interested public'; this does NOT require physical printing — electronic publications qualify; (3) IN PUBLIC USE: any use of the invention (or a product embodying the invention) that is accessible to or observable by the public; a single public demonstration can constitute public use; secret uses in the inventor's laboratory do NOT constitute public use (internal confidential use is not prior art); (4) ON SALE: any sale or offer for sale of the claimed invention; extends to commercial offers for sale even if the invention is kept secret (Helsinn v. Teva, S.Ct. 2019 — see next question); (5) OTHERWISE AVAILABLE TO THE PUBLIC: a catchall added by AIA; covers any other disclosure that makes the invention accessible to the public; oral presentations; trade shows; social media posts; blog posts; ALL ARE GLOBAL: AIA prior art from § 102(a)(1) can come from ANYWHERE IN THE WORLD (prior art is not limited to US activities); this is a change from pre-AIA public use and on-sale bars which were limited to US activities; EFFECTIVE FILING DATE: for applications filed on or after March 16, 2013, the relevant date is the effective filing date (earliest US or PCT filing date for which the specification fully supports the claims).

The on-sale bar prevents patenting inventions that have been commercialized before filing: PRE-AIA ON-SALE BAR: under pre-AIA § 102(b), an invention was barred from patenting if it was 'on sale in this country, more than one year prior to the date of the application'; PFAFF v. WELLS ELECTRONICS (S.Ct. 1998): TWO REQUIREMENTS for on-sale bar: (1) the invention must be the subject of a commercial offer for sale; (2) the invention must be ready for patenting (either reduced to practice or depicted in enabling drawings); COMMERCIAL OFFER: must satisfy contract law standards for an offer; must not be an experimental sale (experimental sales do not trigger the bar); must be a COMMERCIAL (not laboratory) sale; AIA ON-SALE BAR: AIA § 102(a)(1) includes 'on sale' as a prior art category; the question after AIA was whether the word 'public' in 'otherwise available to the public' modified 'on sale' as well — i.e., did AIA require the sale to be public (not secret); HELSINN HEALTHCARE v. TEVA PHARMACEUTICALS (S.Ct. 2019): THE QUESTION: does a secret sale trigger the AIA on-sale bar? FACTS: Helsinn had a supply agreement with MGI Pharma for a drug to treat chemotherapy-induced nausea; the agreement was publicly disclosed (SEC filing) but the specific formulation was kept secret (trade secret); Teva argued the secret supply agreement triggered the on-sale bar; Helsinn argued AIA changed the law to require the sale to be public; THE HOLDING: a SECRET SALE still triggers the on-sale bar under AIA; the AIA maintained the traditional rule from pre-AIA case law; 'on sale' includes both public and secret sales; practical implication: any commercial agreement (even a confidential one) involving an embodiment of the invention before the filing date starts the one-year clock; EXPERIMENTAL USE EXCEPTION: if the sale is primarily to test and perfect the invention (not commercial exploitation), it does not trigger the bar; the inquiry focuses on the purpose of the transaction and the extent of the inventor's control over testing; once the invention is ready for patenting (Pfaff test), experimental sales are hard to prove.

The printed publication standard is technology-neutral and broadly construed: THE PRINTED PUBLICATION STANDARD: In re Wyer (CCPA 1981): a reference is a 'printed publication' if it was 'sufficiently accessible to the public interested in the art' at the time of the relevant date; the test is accessibility, not actual access by anyone; NOT REQUIRED: a 'printed' publication does NOT require physical printing on paper; electronic documents qualify; online publications qualify; the word 'printed' is an anachronistic term from earlier centuries; WHAT COUNTS AS A PRINTED PUBLICATION: JOURNAL ARTICLES: any peer-reviewed or conference paper accessible to the public (subscriptions are OK — the point is that the relevant public CAN access it for a fee or through library); PATENT APPLICATIONS: published US applications (18 months after filing); granted patents; foreign patent publications; ACADEMIC THESES: a thesis indexed in a library catalog qualifies; a thesis not yet catalogued but accessible at a library may qualify (circuit split on how accessible it must be); CONFERENCE PRESENTATIONS: a paper presented at a conference can qualify if: the conference was open to the relevant public; the paper was distributed to attendees; INTERNET PUBLICATIONS: any web page accessible to the public at the relevant date (with proof of the date); captured web pages via the Wayback Machine are commonly used as prior art; social media posts accessible to the public; PRODUCT MANUALS: instruction manuals distributed with commercial products; CATALOG ENTRIES: product listings in publicly available catalogs; WHAT DOES NOT COUNT: purely internal documents (internal company memos not disclosed to the public); documents under NDA (not accessible to the relevant public); papers submitted but not yet published; oral presentations with no written record; FOREIGN LANGUAGE PUBLICATIONS: a document published in any language is a printed publication; machine translation acceptable for demonstrating content; DATE OF AVAILABILITY: the prior art date is when the reference became publicly accessible, not when it was printed; a book printed in 2020 but embargoed until 2021 becomes prior art in 2021.

The AIA grace period protects inventors who disclosed before filing: AIA § 102(b)(1): the AIA provides a one-year grace period that excepts certain disclosures from being prior art; WHAT § 102(b)(1) EXCEPTS: (A) disclosures made by the inventor or joint inventor; (B) disclosures made by others who obtained the subject matter from the inventor or joint inventor; TIMING: the disclosure must have been made ONE YEAR OR LESS before the effective filing date; WHAT THIS MEANS: if an inventor publishes a paper or otherwise discloses the invention, that disclosure does NOT count as prior art against the inventor's own patent application if the inventor files within one year; BUT: a third party who publishes the SAME INVENTION independently (without obtaining it from the inventor) within the same one-year period creates prior art that IS effective against the inventor; THE INVENTOR'S GRACE PERIOD DISCLOSURE AS A SHIELD: if an inventor discloses in November 2023, and then a third party independently publishes the same thing in February 2024, the inventor's November 2023 disclosure serves as prior art AGAINST the third party's publication — the third party's February 2024 publication is not prior art because it post-dates the inventor's disclosure; to use this shield, the inventor must file before November 2024 (one year from own disclosure); PRE-AIA COMPARISON: pre-AIA § 102(b) grace period: any disclosure (not just by the inventor) made more than one year before filing = statutory bar; AIA § 102(b)(1): ONLY certain disclosures (by or from the inventor) are exempted; third-party disclosures are not in the grace period — they are effective prior art from the date of disclosure; RISK OF WAITING: even with the grace period, inventors who disclose publicly before filing face risk because: any INDEPENDENT third-party disclosure during the same year is prior art; international filing outside US requires early filing (EPO has NO grace period for most disclosures); PROVISIONAL APPLICATION STRATEGY: to get an early effective filing date while the invention is still being refined, file a provisional application (which sets the effective filing date) BEFORE any public disclosure.

Prior art is the primary mechanism for invalidating patents: IN PATENT PROSECUTION: the examiner searches for prior art during examination; prior art rejections under § 102 (anticipation) and § 103 (obviousness) are the most common rejection types; applicants distinguish their claims from cited prior art through claim amendments and arguments; ANTICIPATION (§ 102): a single prior art reference that discloses EVERY element of the claimed invention anticipates and invalidates the claim; all elements must be present in a single reference (cannot combine references for § 102); the prior art disclosure must be enabling (not merely described); OBVIOUSNESS (§ 103): a combination of prior art references that, taken together, would have led a person of ordinary skill in the art (POSITA) to the claimed invention at the time of invention; KSR International v. Teleflex (S.Ct. 2007): flexible obviousness standard; combination of known elements using known methods = likely obvious; teaching away from the combination is a strong counter-argument; INTER PARTES REVIEW (IPR): post-grant challenge at PTAB using only § 102 and § 103 prior art that is patents or printed publications; IPR is the primary mechanism for challenging issued patents on prior art grounds; INSTITUTE THRESHOLD: 'reasonable likelihood petitioner would prevail on at least one challenged claim'; DISTRICT COURT INVALIDITY: invalidity defenses in patent litigation include prior art (§ 102; § 103) plus § 101 and § 112 defenses; clear and convincing evidence standard (higher than IPR's preponderance standard); EX PARTE REEXAMINATION: any person can submit prior art to the USPTO to request reexamination; low-cost alternative ($1,700 filing fee); requester participates only at initiation; LIMITED PARTICIPATION after filing; PRIOR ART SEARCHES: professional prior art searches use multiple databases: USPTO full-text search; Derwent Innovation; Espacenet; Google Patents; Google Scholar; non-patent literature (NPL) databases; IEEE Xplore; PubMed; for IPR, also conduct targeted searches in specific technology areas with expert input.