HR 6621, a bill introduced by Representative Lamar Smith on November 30, 2012, proposes so-called “technical amendments” making several changes that are intended to correct and improve certain provisions of the Leahy-Smith America Invents Act (the AIA). The AIA sought to modernize and improve patent law and made clear moves to harmonize US law with international practice.
A glaring difference between the US patent law and patent laws in other nations is the treatment of unpublished patent applications. Under most patent regimes, an unpublished patent application is considered “secret prior art:” available only for purposes of novelty but not obviousness/inventive step. Such a distinction makes sense. The applicant cannot be found to lack inventiveness for modifying something that was not known, and so “secret prior” art cannot be used to destroy inventive step. By contrast, if a new applicant’s invention was literally known and described in the prior art, even if that prior art was secret, the new applicant was not the first to invent.
US law prior to the AIA permitted secret prior art to used for both novelty and inventive step. However, the harshness of using secret prior art for all purposes was substantially mitigated by making secret prior art much easier to overcome. An unpublished patent application was only prior art if (a) it was “by another” and (b) filed in the USA (or a PCT application that named the USA). As a result, foreign-filed applications were not prior art. Furthermore, an applicant could overcome such prior art by demonstrating that (a) he invented the subject matter in the prior art and/or (b) he had invented the claimed subject matter earlier.
Equivalence of secret and public prior art
In other words, the fact that US practice allowed secret prior art to be used for inventive step rejections was counteracted by the fact that there was far less such secret prior art available to use.
On the issue of secret prior art, the AIA does not make US patent law closer to international practice, but makes it a clear outlier. Under the AIA, secret prior art is (a) available for novelty and inventive step,(b) irrespective of whether it was filed in the USA or abroad, and (c) is judged strictly by first to file. In other words secret prior art is completely equivalent to public prior art.
Increasing uncertainty
The existence of more art for obviousness purposes is particularly troubling in view of the easier standards of obviousness under US law. In general, European examiners typically require that the prior art almost literally disclose elements of the invention before it can be used as part of an inventive step rejection. A US examiner, by contrast, does not require such literal teachings and will consider the principles and ideas of the prior art in assessing obviousness. This distinction is particularly relevant in pharmaceutical and biotechnology, where literal teachings are rare.
Under the AIA, therefore, a US applicant can expect to encounter more rejections than previously encountered in the USA, and more than encountered in international practice.
The impact for business is not only in reducing the likelihood for obtaining patent protection in the USA, but in increasing uncertainty both before and after a patent grants. Such uncertainty exists because after the previously secret prior art has published, it is not always clear whether, and how, it could be used under the more fuzzy US obviousness standards.
Prosecution for US applications is expected to get more difficult and costly due to the AIA’s expansion of the “secret prior” art problem, unless Congress amends the law before March 2012. Even though patents are important to the US economy, it is unlikely that Congress will consider more patent reform while they are focused on more immediate budget problem unless business leaders can bring this issue to the attention of the Congress.
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