Monday, February 24, 2014

Professor Lemley - Does "Public Use" Mean the Same Thing It Did Last Year?

Prior to the America Invents Act's effective date of March 16, 2013, 35 USC 102 states an inventor loses patent rights if the invention is in "public use" more than one year before the filing date. The purpose is to prevent too much delay (i.e., more than one year) in filing a US patent application while the invention is being commercially used.

In Does 'Public Use' Mean the Same Thing it Did Last Year?, Stanford Law Professor Mark Lemley makes a compelling argument that the AIA did not change the meaning of "public use" nor eliminate the rule of Metallizing Engineering v. Kenyon Bearing & Auto Parts.

The Metallizing case held that a secret commercial use is not prior art that bars a third party from obtaining a US patent, but does start the one-year grace period for the commercial user seeking the US patent. The PTO Examination Guidelines stating otherwise doesn't seem to squarely address how the AIA impacts Metallizing.

Professor Lemley appears to be right on the statutory interpretation of 35 USC 102 under the AIA despite other opinions in the USPTO Examination Guidelines (See America Invents Act - One Sale Bar, 35 USC 102), Bob Armitage, a principal AIA drafter, and Senator Kyl's staffer Joe Matal.

If Professor Lemley turns out to be wrong, the US patent system has handed out an incentive to commercially use inventions as trade secrets indefinitely until filing a patent application.

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