Despite the promulgation of the American Invents Act (AIA) in 2012, the concept of prior art has basically stayed the same. Section 102 embodies two different concepts. First, the concept of novelty embodies that there are things other people do to destroy the novelty of the patent applicant’s claimed invention. These include publishing the subject matter in patents, patent applications, and other literature; or putting the claimed subject matter into public use or on sale. Second, the concept of loss of rights embodies that there are things the inventor does to destroy his own claimed invention. The inventor can do so by publishing or putting the subject matter into the public as above.
Section 102 also has certain time limits also stated. One time limit is any prior art that is before the effective filing date of the relevant patent application. Generally, the effective filing date is interpreted to mean the earliest effective filing date. The earliest effective filing date can be the patent application’s actual filing date, or an earlier one based on either a claim for an earlier statutory filing date or based international convention priority. There is a one-year grace period if the inventor or designate created the prior art. Often, litigation exists over whether the claimed subject matter indeed can be traced back to the earliest patent application filing date or whether the now claimed invention is subject to intervening prior art.
When Is Prior Art Really Prior Art?
There is a deep body of case law on when prior art is actually prior art. Much discussion will involve if the prior art is a publication, whether the publication was actually in the public (that is, was the publication publicly accessible), and when the publication was actually published. For example, traditionally publication meant published in paper-form, such as traditional journals or literature. With the internet, case law has interpreted when an internet-only article is actually statutory prior art. Other case law interpreted when a publication is published and how to prove it was published when purported to be published. In some circumstances the challenger may need to proffer affidavits or declarations from a librarian or other document superintendent to verify the publication date and/or verify its accessibility. The latter formed the basis of the so-called indexing cases, where (for example) a doctoral thesis was properly in public access because it was indexed and card-cataloged with meaningful classifiers, versus the thesis that was just indexed by the candidate’s name.
Applicant Admitted Prior Art is Prior Art … Sometimes
The inventor can also admit that something is prior art in the patent application. Often times the inventor will, in an effort to “sell” the invention to the patent office (and later to courts or juries), describe the prior art in the background of the invention. The inventor will describe the problems in the past, characterize other people’s attempts to solve the problems of the past, why they failed, and then why the new invention is better or solves the problem. Because the inventor wrote that something may be prior art, the courts take that admission at face value. After all, the specification is written before the patent application is filed. The inventor did not have to write what it did. It is routine for the Patent Examiner during prosecution or patent challengers in court to rely on applicant admitted prior art.
The Federal Circuit Court of Appeals recently clarified that for PTAB purposes, whether admitted prior art can be the basis for an IPR. Recall that in a PTAB-IPR proceeding based on prior art, the statute limits the “kind” of prior to only patents and other publications. See, 35 U.S.C. 311(b). In Qualcomm v. Apple, the Federal Circuit vacated the Board’s invalidity decision because the basis of the prior art in the petition was “applicant admitted prior art” described in the patent’s specification itself. See, Qualcomm v. Apple, CAFC 20-1558, 01 Feb. 2022. The Federal Circuit stated that for an IPR, the statute limits to the prior art to patents and other publications, and therefore excludes applicant admitted prior art in the challenged patent itself. The Court held that the “basis” of the petition must be based on the prior art to the challenged patent itself. Applicant admitted prior art is not prior art to the challenged patent itself and as such, is non-statutory. The Court went on to explain that applicant admitted prior art can be used, even in the IPR sphere, in other contexts for other reasons.
Old Prior Art Not In Computerized Databases
In searching for prior art, the older the publication the better. Old prior art helps establish what the state of the technology was at the time. And prior art since then show the development of the state of the technology. With the advent of the internet, most prior art search companies use electronic searching. But that search is only as good as the publications in electronic form. But of course, not every paper copy of a publication is now in electronic form. Database aggregators make decisions about the paper copies to scan and render searchable. When the author was in-house counsel at a pharmaceutical company, we bought paper copies of old publications to add to our prior art library. Our library contained old pharmaceutical textbooks, catalogs of pharma products, conference papers and agenda, etc. We found that old paper copies of publications often contained valuable prior art. Yes, manually reading the old and not-electronically-searchable documents was tedious, but without that manual process the relevant prior art would not be found. And whilst new documents may be captured electronically and searchable, the problem of old prior art in paper form still remains. And when challenging a patent in a PTAB or court proceeding, the best prior art may exist in the original paper form.
Practical Considerations
In the patent application drafting process, the drafter needs to be cognizant about classifying the prior art. Some patent drafters still will describe prior art with reference to a particular patent number and a narrative of the problem/solution contained therein. For example, the drafter may write, “U.S. Patent # 1,111,111 describes a pharmaceutical formulation that is only immediate release and has no polymer-based coating.” Some drafters may simply allude to the general principle by writing “other immediate release formulations may exist but they do not contain polymer based coating.” The latter is likely equally as effective as the former but doesn’t disclose any particular reference. The former also has a potential problem if the ‘111 patent is not disclosed in an Information Disclosure Statement (IDS) and may raise potential inequitable conduct claim. Notwithstanding, drafters should take care to scrutinize any characterization of the problems in the past and the prior art.
Based on the Qualcomm v. Apple case, perhaps another PTAB challenger can find the actual prior art publication referenced as applicant admitted prior art. Yet again, if the challenged patent fully cites the applicant admitted prior art, then the challenger has an easier job digging out the actual underlying prior art publication. But if the applicant based prior art is more vaguely referenced, finding the underlying prior art is harder. This is yet another reason not to draft applications with pinpoint cites to prior art.
Finally, companies that file patent applications or routinely challenge patents may wish to obtain paper copies of old prior art that is not yet in electronic form. There is no distinction between paper versus electronic found prior art. If a challenger practices in a certain technology space, it may be helpful to create a paper-based library of prior art. Yes, acquiring a paper-based library can create space issues and indexing options. After all, someone will need to index the books or publications, which is time, effort, and money spent. But it could it be well worth it.
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