Over the last few decades, the United States has been incrementally harmonizing its patent law with the rest of the world.  Those efforts continued with the signing of the America Invents Act (“AIA”) in 2011.  For example, the AIA created a first inventor-to-file patent system, while all but eliminating the best mode requirement. One area where we have not moved as far towards harmonization with the passing of the AIA as some initially thought is patent invalidity based on an “on sale” bar.

Almost as soon as the AIA was enacted, many commentators suggested that the new law eliminated attacks on patentability based on the theory that an embodiment of the invention was “on-sale”, but where the invention itself was kept secret.  Indeed, the United States Patent and Trademark Office concluded that the AIA did change the prior law, finding that “[t]he phrase ‘on sale’ in AIA 35 U.S.C. 102(a)(1) is treated as having the same meaning as ‘on sale’ in pre-AIA 35 U.S.C. 102(b), except that the sale must make the invention available to the public.” See Examination Guidelines for Implementing the First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11,059, 11,075 (Feb. 14, 2013).  One rationale offered for this interpretation is that it is consistent with the broad goal of harmonizing U.S. patent law with the rest of the world.  And the rest of the world does not allow patents to be invalidated based on such secret activity (so long as those in the public are not able to reverse engineer the invention).  See, e.g., European Patent Convention Art. 54(2) (2007).  But many other commentators held the opposite view – that the AIA did not clearly change the law that such “secret sales” could be bar to patentability.

Those in the harmonization camp have now had their hopes all but completely dashed by the Federal Circuit’s January 18, 2018 denial of rehearing and rehearing en banc in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., Teva Pharmaceutical Industries, Ltd., Case 2016-1284, 2016-1787 (Fed. Cir. 2018).   A faint ray of hope for that camp may still exist since Helsinn has signaled that it will petition the Supreme Court to hear its case, though there is no guarantee the Court will take up that appeal.  See Id. at Dkt. 199 (Appellee’s Mot. to Stay Execution of Mandate) (January 18, 2018).

Helsinn Facts

Helsinn is a small family-run Swiss company that acquired a drug, palonsetron, for treating chemotherapy induced nausea and vomiting (“CINV”). One of Helsinn’s patents asserted against Teva was subject to the new AIA law and claimed low-dose formulations for treating CINV containing 0.25 mg of palonosetron (as well as other excipients in specified amounts) in a 5 mL solution. In order to finance drug development, Helsinn contracted with a third-party in the United States to license and distribute its yet-to-be-developed final formulation.  The deal required that the third party keep Helsinn’s claimed inventions strictly confidential.  Because the third-party company also was small, its Helsinn agreement was a “material” contract for the third-party company under US securities regulations, which required that it be publicly disclosed.  Thus, a redacting copy of the agreement was publicly disclosed such that all formulation-related information was kept secret.  Helsinn Healthcare S.A. v. Dr. Reddy’s Labs. Ltd., No. CV 11-3962 (MLC), 2016 WL 832089, at *29 (D.N.J. Mar. 3, 2016).

“On-sale” novelty destruction Pre-AIA

Section 102(b) the 1952 Patent Act provides that an inventor is not entitled to a patent if, in the United States, the invention was “on sale” or “in public use” more than a year before the patent application is filed.   Almost twenty years ago, the US Supreme Court decided that for the on-sale bar to apply: (1) the product must be the subject of a commercial offer for sale; and (2) the invention must be ready for patenting.  For decades, US courts have found commercial offers for sale to be invalidating, even if the details of the invention were kept secret, based at least in part on the policy to urge inventors to promptly disclosure their inventions, while at the same time controlling the risk that an inventor will commercially exploit his invention beyond the statutory patent right term.

In enacting the AIA law, Congress amended § 102 to bar the patentability of an “invention [that] was [1] patented, [2] described in a printed publication, [3] or in public use, [4] on sale, [5] or otherwise available to the public before the effective filing date of the claimed invention.”  35 U.S.C. § 102(a)(1) (emphasis added) (2017).  See Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 855 F.3d 1356, 1371 (Fed. Cir. 2017).  The new law no longer requires an invalidating sale to be in the United States – now it can be anywhere.  The issue in Helsinn was whether the italicized words, which were not in the 1952 law, now require that all the patentability  bars be “available to the public” and therefore, carves out sales or offers for sale where the public could not discern the invention.  In particular, Helsinn argued that the new statute expressly precludes such sales by adding the catch-all phrase “otherwise available to the public” to limit each kind of patentability bar.  See Id., Principal Brief of Plaintiffs-Appellees Helsinn Healthcare S.A. and Roche Palo Alto LLC, 2016 WL 1698099 at 34-41.  Thus, in Helsinn’s view, the “otherwise available to the public” applies to each of the categories where an invention was previously:   [1] patented, [2] described in a printed publication, [3] in public use, or [4] on sale.  Id.

The Federal Circuit panel was not persuaded, finding that if Congress had intended to make such an important change in the law, it would have used clearer language.  See Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 855 F.3d 1356, 1371 (Fed. Cir. 2017).  The court analyzed its pre-AIA on-sale bar cases and noted that patent forfeiture was found even when there was no delivery of the thing offered for sale, when delivery was set after the critical date and even when, upon delivery, members of the public could not ascertain the claimed invention. Id.  In fact, numerous “on-sale” cases under pre-AIA section 102, held that the existence of a sale of the invention need not be public for the sale to preclude patentability.  Id.  Moreover, in declining to rehear the case, Judge O’Malley of the Federal Circuit explained numerous reasons why Helsinn’s interpretation was not convincing, including that Helsinn’s construction of the law would effectively make the “on-sale” bar superfluous because “public use” and “on-sale” bars would cover the same things.  See Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., Teva Pharmaceutical Industries, Ltd., Case 2016-1284, 2016-1787 (Fed. Cir. 2018), Order on Petition for Rehearing En Banc at *8. Thus, the “otherwise available to the public” language of the new statute must presently be interpreted as a new attach-all category not previously captured by the 1952 law:  for example – a speech, anywhere in the world that discloses the invention.

Practical Considerations

There is often a need to make distribution agreements public to induce investors to supply funding for product development, especially for small companies, where news of the agreement will likely be published in some form. Because the on-sale bar can be triggered even though the transaction is several steps removed from the consuming public that actually purchases the invention, special care should be exercised in crafting such agreements.  This is especially so when the invention has been actually made or has been reduced to writing in an enabling disclosure.  In such situations, all that is needed to trigger the bar is for there to be a “commercial sale or offer for sale”.  Almost always such problems can be avoided if counsel is informed.  For example, if for some reason it is not possible to file the application (filing early is strongly encouraged) the transaction can be crafted so as to avoid any transfer of title, the prospect of being “on sale” should be remote.


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  1. Does the “on sale” criterion require an offer to the general public or is a single, specifically negotiated transfer between two parties (e.g. the sale of a prototype to a certification service provider for beta testing under an NDA) sufficient to fulfill the criterion?

    1. The Federal Circuit rejected the “series modifier doctrine” and thus the “otherwise available to the public” does not modify “on sale”. The court did not give specific guidance on whether a truly secret sale still qualifies as prior art. The Federal Circuit’s statements on this issue signal to me that the on sale bar will be applied to secret sales as they were under the pre-AIA law. The hypo you provided gives me concern that the bar would apply since it appears that title changed hands. But there may be an out for experimental use given that the sale was for beta testing.

  2. This all seems a bit odd to me. Post-AIA, lack of novelty arises under 35 USC 102 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”.

    Now, to my (non-US) eye, it would appear that a plain reading of this provision leads to the conclusion that the “or otherwise…” language modifies the “on sale” requirement. That is, it implies that putting the invention “on sale” is only relevant if it makes it available to the public.

    When one considers that it must be THE INVENTION that is made available to the public, I fail to see how a “sale” that is non-public and/or non-informative (with respect to the identity of the invention) can possibly be prejudicial to novelty under post-AIA 102.

    All in all, this makes me wonder how it might be possible for the legislature to amend 35 USC in such a way as to force the courts to give up familiar principles from old case law. It seems to me that the “on sale” bar is not the only principle that ought to have been consigned to the waste bin of history with (relatively) recent revisions of the US statute. But somehow the US courts seem to find ways to breathe new life into principles that seem to no longer serve any useful purpose.

  3. My initial gut feeling went along the lines adumbrated by Concerned Observer.

    But then I read the O’Malley opinion, from start to finish. And (to my great surprise) I found it totally convincing.

    It is important to understand how viscerally important it seems to be, to most Americans, to limit the time that inventors can enjoy exclusive rights. The basic thought is that inventors ought not to be allowed to tag onto the end of an initial period of commercial exploitation (with the invention under wraps) another 20 years thanks to a belated patent filing and grant.

    I suppose that this idea is an artefact of their “First to Invent” system. i suppose that one day they will come around, and see it from a First to File perspective. But not yet.

    Incidentally, i still remember the advent of the EPC in the UK. Many patent attorneys found it odd, that under the EPC one could commercialize an invention, and patent it later.

    Then again, as a trainee in 1973 it was impressed upon me that one could patent or publish but to do neither of these would be to risk being in due course squeezed out of the market by valid patents granted to your strongest competitor, who is makes the same invention independently.

    This is the ancient case of one “Dolland” who (as I recall) kept his telescope invention in his “closet”, and then complained when another made the same invention later, and patented it.

    The big debate about “prior sale” and the AIA is whether the prior sale of something renders that thing part of the “prior art” or whether its effect is no more than a personal bar on the seller getting an enforceable patent right. Is the seller’s patent bad? Or is it merely unenforceable?

    1. @Max,

      I still fail to see how a non-informative disclosure (even if it takes place prior to the filing of a patent) can possibly prejudice either patentability or enforcement of a patent. I also do not understand why any patent system would want to intervene in such circumstances.

      I mean, why should there be any negative consequences under patent law to concluding a (confidential) contract that merely indicates that one party will be afforded a distribution licence in respect of a product that has not yet been developed? Indeed, if the invention had not even been conceived at the time the licence agreement was concluded, how could it possibly make THE INVENTION “available” to anyone, let alone the public?

  4. Concerned, if I remember right, Judge O’Malley recognises explicitly in her Decision that not every Distribution Agreement will trigger the “on sale bar”. I suspect that the subject matter of this particular Agreement, to wit the “final formulation”, might have to do with post-solution post-Invention activity like optimal choice of excipients. I suspect that Agreements prior to conception of the claimed subject matter would not trigger the on sale bar. This one did (I guess) because it was seen as commercialisation of an invention already reduced to practice.

    But I’m not a US attorney. Perhaps the blog item writer will reply to us, or a US attorney?.

    1. @Max

      Having read O’Malley’s opinion, it seems to me that the main reason for holding that the “on sale” still applies is an extreme unwillingness on the part of the CAFC to acknowledge the nature and significance of the changes that AIA made to US patent law.

      Statements by legislators indicating the lack of public interest in an “on sale” bar are considered but dismissed as irrelevant… but only because they do not explicitly address the situation where a sale is “public” but still non-informative.

      Following on from this, O’Malley concludes that it is OK to apply the “on sale” bar to a completely non-informative, “public” sale. Relying upon PRE-AIA case law, O’Malley states that the rationale for such a bar is that:
      “publicly offering a product for sale that embodies the claimed invention places it in the public domain, regardless of when or whether actual delivery occurs”.

      Of course, this rationale completely misses the point that one of the biggest changes made by the AIA is the introduction of a requirement for THE INVENTON to be made available to the public in order for novelty to be denied.

      In this context, a sale that does not place the invention (or a product embodying it) into the hands of the public is surely irrelevant to novelty under post-AIA 102. Pre-AIA case law on what is “made available” by a sale is simply irrelevant to this point… as such case law never decided on what was made available to THE PUBLIC.

      To be fair, O’Malley did (sort of) consider this point, when stating that:
      “Requiring such [public] disclosure as a condition of the on-sale bar would work a foundational change in the theory of the statutory on-sale bar”.

      The trouble is that he then did not stop to consider that changing the US patent law from one system (first to invent) to a COMPLETELY DIFFERENT (first inventor to file) system actually represents precisely the kind of “foundational change” that could (and should) have done away with the “on sale” bar.

      O’Malley also failed to consider whether there could still be a legitimate public interest in maintaining an “on sale” bar post-AIA. The sole public interest set out in Pennock is that the bar encourages prompt communication of inventions to the public. However, it is not possible to discern any logical reason why being slow to communicate an invention should invalidate a patent when the existence of a non-informative sale is communicated to the public, but NOT when a truly private sale takes place.

      If there is no way to distinguish between truly private sales and merely non-informative sales on the grounds of (differing) public interest, then they should not be treated differently under the AIA. I hope that SCOTUS takes this case and is brave enough to admit that, contrary to the view of the CAFC, the AIA is a real game-changer.

  5. Fascinating. Concerned, I do not see it as you do. I wonder, is it wishful thinking on your part, that you see the AIA as changing everything, and imposing on the courts an obligation to scrap the established law.

    Mrs O’Malley’s line is that you (the judicature) don’t digress from the established law unless the legislator has told you to do so. And here, she finds, the legislator has done nothing of the kind. Her exploration of the grammar within new AIA Section 102 I for one found very persuasive and I’m not expecting SCOTUS to reverse her on that.

    Where we might agree is that the AIA fails to harmonize with the First to File patent law of the rest of the world. Just as Americans frequently shoot themselves in the foot when it comes to issues of Paris Convention priority, because their domestic law is so exceptional, so they will continue to shoot themselves in the foot in other issues of patentability, where there own domestic law is out of harmony with that of the rest of the world. For that, we ROW-ers should be thankful. If domestic US patent law ever harmonizes with ROW patent law, American diligence, and willingness to spend oodles of money on patent protection, will sink the rest of us.

    You write: “one of the biggest changes made by the AIA is the introduction of a requirement for THE INVENTON to be made available to the public in order for novelty to be denied.” That’s how you see it. that’s how you read AIA Section 102. But Mrs O’Malley has a different view. And as I say, her dissection of the grammar of AIA section 102 was forensic enough to change my mind on that, and agree with her.

    The issue ain’t gonna go to SCOTUS, I think. Not yet anyway.

    1. Yes, we shall just have to agree to differ. Unlike you, I see nothing compelling in O’Malley’s analysis.

      To summarise, points in favour of AIA changing the meaning of “on sale” (to require actual making the invention available to the public) were:
      1) the plain language of 102;
      2) floor statements made during the passage of the AIA.

      We also need to consider that the US government filed an amicus brief that argued in Helsinn’s favour on this point.

      On the other hand, arguments against Helsinn’s interpretation of post-AIA 102 were:
      A) the absence of wording in the AIA, or floor statements relating thereto, that EXPLICITLY addresses the highly unusual situation where the existence of a sale is public knowledge but that sale does not in any way make the invention available to the public; and
      B) pre-AIA case law holding that a non-informative sale is prejudicial to patentability.

      As I have said, I find point B wholly unconvincing. It assumes that there is nothing stopping pre-AIA case law being applied to post-AIA 102. However, in my view, it is irrational to apply “first to invent” case law to a provision that requires the invention to be made available to THE PUBLIC. As I have said, doing so leads to a bizarre situation where one is forced, for no good reason, to artificially distinguish between activities that share the common characteristic of not actually placing the invention in the hands of the public.

      That just leaves point A which, to me, is nothing more than a judicial “gotcha”. It is unreasonable to expect new legislation (and floor statements made during its passing) to exhaustively and explicitly address every conceivable factual scenario for novelty and explain how the new law changes the standard for assessment of novelty for each such scenario. Unlike O’Malley, I therefore do not attach any particular significance to the fact that floor statements did not explicitly address novelty for non-informative sales.

      Of course, one has to then consider the broader perspective before deciding whether AIA is indeed a game-changer. And it is consideration of that broader perspective where I find O’Malley’s analysis to be least convincing. In particular, I find it bizarre that there was no “sanity check” regarding the final conclusion. I mean, what sane system would set itself up as “first (inventor) to file” and then allow patentability to be denied on the basis of a disclosure that does not actually make the invention available to the public (before the effective date of the patent)? Moreover, what possible public interest (or explicit basis in the AIA) is there for invalidating based upon a non-informative sale but not on the basis of a “secret” sale?

    2. Many, perhaps all, of Concerned’s comments are reflected in Helsinn’s briefing, as well as its numerous supporting amici. There were (are?) many US lawyers who I believe would wholeheartedly agree with the policy points argued by Concerned. Unfortunately for those in the harmonization camp, those views did not persuade the Federal Circuit. Max is correct to point out that Judge O’Malley has sound legal arguments to support the Federal Circuit’s interpretation of the new AIA law. Like Max, I will be surprised if the SCOTUS takes this case.

  6. Thanks both. Nice to have correspondence with two writers who are so well-informed.

    Can either of them comment, then, on my question above, namely:

    “The big debate about “prior sale” and the AIA is whether the prior sale of something renders that thing part of the “prior art” or whether its effect is no more than a personal bar on the seller getting an enforceable patent right. Is the seller’s patent bad? Or is it merely unenforceable?”

    i wonder, could one “sell” the issue to SCOTUS on the basis that pre-AIA the jurisprudence was all about a “personal” bar, and that the underlying logic of the AIA was to change all that, by switching prior sale to a prior art 102 “available to the public standard”


  7. Let’s recap on the differences between pre-AIA 102(b) and post-AIA 102(a)(1). With deleted wording in square brackets and additions in capitals, the differences are:
    the CLAIMED invention was patented, [or] described in a printed publication, [in this or a foreign country] or in public use, [or] on sale, OR OTHERWISE AVAILABLE TO THE PUBLIC BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION [in this country, more than one year prior to the date of the application for patent in the United States].

    Now, considering the nature of these changes, is it really plausible to assert (as Teva did) that “Congress did not change the meaning of the on-sale bar or disturb settled law”?

    For example, pre-AIA 102(b) required the invention to be “on sale IN THIS COUNTRY”. By way of contrast, there are no geographical limitations in post-AIA 102(a)(1). By any measure, that is a significant change … which should have (but somehow did not) prompt the CAFC to re-evaluate from scratch the purpose and meaning of the “on sale” language.

    Another thing: my understanding is that the US courts had held that “in this country” in pre-AIA 102(b) modified the meaning of BOTH “on sale” AND “in public use”. By way of contrast, it appears that the CAFC in Helsinn held that the language replacing “in this country” (ie “or otherwise available to the public …”) does not modify anything at all.

    This simply does not make any logical sense. The wording “or otherwise available to the public …” is not just there for decoration. It means something.

    In my view, turning a blind eye to this fact fatally undermines O’Malley’s conclusions. So does her wilful ignorance of floor statements that explicitly indicated that a purpose of the AIA was to make secret prior use irrelevant to novelty.

    Whilst secret use was not at issue in Helsinn, it was nevertheless highly relevant. This is because the floor statements make it crystal clear that the “available to the public” wording in post-AIA 102 was intended to modify the meaning of “in public use”. This surely means that it also modifies the meaning of “on sale”.

    Max and Greg may be correct that SCOTUS are unlikely to pick this case up. But this does not change the fact that the CAFC’s conclusion is not only illogical and bonkers but it also flies in the face of the stated intent of the legislators.

  8. I’m always a bit wary when somebody starts a sentence with “surely”. Not saying, Concerned, that this is the case here but, in general, this is an early warning, an arm waver alert, when the writer is trying to convince himself of the proposition that follows. I still don’t see why “available” can be read as qualifying “public use” while leaving the old on sale bar untouched. The adjective “public” qualifies “use” but not “sale”.

    I still do not see any fatal attack on O’Malley’s reasoning or that it is no better than “bonkers”. Can one not reasonably assert that The Congress wanted to expand the scope of 102 to include a Catch-All phrase, for ALL acts of making subject matter publicly available, even those that fell outside the previous wording, even while at the same time retaining the full established “on sale bar” in addition, as well?

    As to statements from “the floor” of Congress, doubt has been cast (on the Patently-O blog) on the power of such statements to bind the Federal Circuit. As I understand it, many of (all?) the statements here relied upon came too late to bind the judicature. The courts normally have to struggle with the text of the Statute, as it is printed, warts and all, without recourse to “the intention” of the legislator. The argument is very powerful, that only an explicit statutory change can over-rule the established law.

    But that said, the AIA on patentability is certainly a shambles. For example, there is logic for the pre-AIA “on sale bar” for such prior sales within the USA as do NOT make the claimed subject matter available to the US public, but no such logical underpinning for such a category of prior sales anywhere else in the world.

  9. Max,

    To clarify, I used the word “surely” on the grounds that what followed was a logical deduction.

    To explain, post-AIA 102 include the words “or in public use, on sale, or otherwise available to the public …”. Logic dictates that (potentially) modifying language coming at the end of a list of alternatives modifies the meaning of: ALL members of the list; just the last member; or, as you have suggested, NONE of the members of that list.

    In this instance, “on sale” is the last member of the list. Thus, if another member of the same list (“in public use”) is modified by the language at the end of the list, it necessarily follows that the last member must also be so modified.

    I can understand that floor statements may not be persuasive on their own. However, there are other considerations that also point to the same conclusion. One is the (logical) interpretation of the plain meaning of the wording of post-AIA 102, as outlined above. Another is the policy objectives that are embodied in the changes that the AIA made to 35 USC. And then there is a final, sanity check for one’s preferred conclusion (eg is the conclusion incompatible with any crystal-clear objectives set out in connection with the new legislation, and is it supported by a COHERENT public interest objective?).

    In my view, all of these other factors point the same way as the floor statements, namely that AIA requires a prior disclosure to make the invention available to the public in order to prejudice novelty.

    To me, the CAFC’s decision is “bonkers” because it salami-slices the issue (ie dismisses each of the above factors without giving serious consideration to their combined significance) … and so ends up at a position that, as you point out, is no longer defensible from a public interest perspective.

    1. I find the argument that there is no difference in i) a sale that publicly discloses the invention and ii) a public prior use, and that therfore the “sale bar” has different requirements than the public prior use quite convincing.

      1. @Peter,

        I’m afraid that your comment makes no sense to me. Could you please elaborate? Precisely what do you find convincing, and why?

        1. Well, the law recites “invention [that] was [1] patented, [2] described in a printed publication, [3] or in public use, [4] on sale, [5] or otherwise available to the public before the effective filing date of the claimed invention.”‘

          When it is now postulated that option [4] requires that the invention is made available to the public, option [4] would pratically be the same as option [3], “in public prior use”. However, that would reduce the number of options that bar patentability from 5 as recited in the law to only 4. The argument is now that it was not intended by the law maker that the same criterion is mentioned twice in that sentence with different wording. From this it follows that option [4] must have different requirements than option [3]. I find this pretty persuasive.

  10. Concerned, your “combined significance” coherency point carries conviction with me.

    Courts are quick to disapprove of parties who go in for salami slicing. Rightly so!

    So, you and I can agree to deprecate any court that itself resorts to it, to wriggle out of the mental effort that the court would otherwise have to put in, to reduce to writing the reasoning that gets it to the right result.

    BTW: Is there not, somewhere in the AIA, guidance to the US Courts (in the form of a “have regard” clause) to the effect that the AIA is supposed to harmonise with the EPC? Or is that guidance only for the USPTO?

    1. Max,

      The AIA does contain the following statements. Were they what you were thinking of?

      “It is the sense of the Congress that converting the United States patent system from ‘‘first to invent’’ to a system of ‘‘first inventor to file’’ will promote the progress of science and the useful arts by securing for limited times to inventors the exclusive rights to their discoveries and provide inventors with greater certainty regarding the scope of protection provided by the grant of exclusive rights to their discoveries”.

      “It is the sense of the Congress that converting the United States patent system from ‘‘first to invent’’ to a system of ‘‘first inventor to file’’ will improve the United States patent system and promote harmonization of the United States patent system with the patent systems commonly used in nearly all other countries throughout the world with whom the United States conducts trade and thereby promote greater international uniformity and certainty in the procedures used for securing the exclusive rights of inventors to their discoveries”.

      1. Not the first. But the second one perhaps.

        The language is certainly an improvement. Americans used to parrot that “most” of its trading partners use “First to File”. But now I see it is “nearly all”. Still a bit diffident, given that the USA usually rejoices in its status as a unique and “exceptional” jurisdiction.

        This suggests that there are still “First to Invent” countries. Do you know which they are?

    2. There is also the House Report on the AIA (https://www.congress.gov/112/crpt/hrpt98/CRPT-112hrpt98-pt1.pdf), the “Purpose and Summary” section of which contains the following commentary on the amendments to section 102:
      “This provision also, and necessarily, modifies the prior-art sections of the patent law. Prior art will be measured from the filing date of the application and will typically include all art that publicly exists prior to the filing date, other than disclosures by the inventor within 1 year of filing. Prior art also will no longer have any geographic limitations. Thus, in section 102 the ‘‘in this country’’ limitation as applied to ‘‘public use’’ and ‘‘on sale’’ is removed, and the phrase ‘‘available to the public’’ is added to clarify the broad scope of relevant prior art, as well as to emphasize the fact that it must be publicly accessible”.

      The legislators would have had the above purpose and summary in mind when they voted on the AIA. Thus, in the light of the last sentence of that quote, it seems to me that the clear will of the legislators was to impose a requirement for the invention to be made available to the public.

      Could someone please enlighten me as to why the CAFC did not place more emphasis on the House Report? It seems to have been acknowledged only as a footnote to remarks made by Senator Kyl.

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