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Late last year, the president signed the American Inventors Protection Act (AIPA) and thereby ushered in some of the most significant changes to the patent laws since the advent of the U.S. patent system more than 200 years ago. Some of these reforms generated much public discussion – the new “prior user” defense, for example, or the “guaranteed” patent term. Others entered the U.S. Code with a bit less fanfare. Take the amendment to 35 U.S.C. sec. 103. With a few simple words, the AIPA has rectified an oddity in U.S. law that often resulted in a company’s own “secret prior art” being used against it to prevent patenting of its later related inventions. Now counsel should be able to avoid that trap. To be patentable, an invention must be novel and nonobvious when judged in the context of the prior art. Various subsections of 35 U.S.C. sec. 102 set forth the types of prior art that can be asserted against the claims of an application to show that the invention is not patentable. Generally, prior art consists of all inventions that came before the invention in question and that are also available to the public. The law recognizes a special circumstance, however, in which “secret prior art” can defeat patentability. An issued U.S. patent becomes effective as prior art on the date the patent application was filed. This is an interesting concept given that patent applications are traditionally maintained in confidence by the Patent and Trademark Office until issuance of the patent. A pending application is not publicly available as of its filing date. Nevertheless, the Supreme Court in Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926), reasoned that but for the PTO’s delay a patent would issue instantaneously upon filing of the application. The Court thus blessed the use of secret prior art against later inventions. Milburnwas codified in the 1952 Patent Act as sec. 102(e), which provides that an applicant is entitled to a patent unless the applicant’s invention was described in “a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent.” In other words, if a patent application claims the same subject matter as that described in an earlier application, the prior application is “secret prior art” evidence that the later applicant is not the original inventor. PRE-AIPA TRAP This makes perfect sense when the earlier and later applicants are wholly unrelated to each other. Prior to the AIPA, however, the law treated unrelated applicants and related applicants alike with respect to the use of sec. 102(e) prior art. Even when applicants A and B were working for the same employer, A’s patent could prevent B from obtaining a patent on its invention. Suppose a company developed a product having several different inventive features embodied in different components of the product. The company filed an application that disclosed all of the inventive features but claimed only some of them. Later, the company filed another application to claim the features not claimed the first time around. Before the AIPA, if the inventors in the later application were not identical to those in the earlier application, the earlier application could become a sec. 102(e) reference against the later application. This secret prior art trap resulted in part from the way U.S. law treated inventorship. Even though two inventors worked for the same employer, their joint efforts were considered the work of a different inventor from their individual efforts. Thus, the work of one could be prior art to the later joint work of both; likewise, the joint work of both could be prior art to the later work of only one of them. In each case, the earlier application was deemed to be the work “of another” and thus a valid prior art reference under sec. 102(e). There were ways to avoid the secret prior art trap. For instance, if related applications were filed on the same day, neither application could be used against the other under sec. 102(e). Also, if applications were filed sequentially and the earlier one was asserted against the later during prosecution in the PTO, the applicant could then combine the disclosures of both as a continuation-in-part application. This continuation-in-part application had to be filed as a separate third application if no common inventors existed between the first two applications. Alternatively, it was possible for applicant B to remove A’s earlier application as a prior art reference by proving that B’s invention was made before A filed its application. But none of these techniques was entirely satisfactory. Filing all related applications on the same day was undesirable if it meant delaying the filing of an application that was ready so that a related application could be prepared. Combining applications into one continuation-in-part application en-tailed additional expense and often delayed the examination process. And in many cases, a later applicant was unable to prove a date of invention prior to the earlier application. SEEK ASSIGNMENT AGREEMENTS Now the AIPA has eliminated the secret prior art trap in certain cases. The test for determining whether an invention is unpatentable due to obviousness is described in sec. 103. The new amendment to sec. 103(c) provides that subject matter that would otherwise qualify as prior art under sec. 102(e): “[S]hall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.” As long as both A and B had assigned or were obligated to assign their inventions to their employer, applicant B will no longer be prevented from obtaining a patent based on A’s earlier application. It is no longer necessary to file both applications on the same day, to combine them into one continuation-in-part application, or to swear behind the sec. 102(e) reference. Note carefully, however, the words “under this section” in sec. 103(c). Commonly assigned subject matter that would otherwise qualify as sec. 102(e) prior art is rendered inapplicable against the later invention only in the context of an obviousness analysis under sec. 103. If the earlier application fully anticipates the invention claimed in the later application, the earlier application is still a valid reference against the later one under sec. 102(e). Also, an earlier application that would qualify as sec. 102(e) prior art is removed as a reference only if, “at the time the [later] invention was made,” the later invention was assigned to the same person or was subject to an obligation of assignment to the same person. Without a pre-existing obligation, an assignment executed after an invention is made will not insulate the invention from sec. 102(e) prior art. Accordingly, it should be standard procedure for any organization with employees who may develop patentable inventions in the course of their work to have each employee execute a written agreement to assign all inventions to the employer. The agreement should be signed at the time of hiring to avoid problems of inadequate consideration that might be raised if the agreement were signed later. An agreement to assign should also be put in place when an organization embarks on a collaboration with outside entities that may result in inventions. The agreement should obligate all inventors to assign their work to the organization. This should insulate any invention made during the collaboration from sec. 102(e) prior art created by the organization prior to the collaboration. RETROACTIVITY The AIPA may also offer an opportunity to retroactively insulate pending patent applications filed before the change in the law from potentially available sec. 102(e) prior art. The change in sec. 103(c) applies “to any application for patent filed on or after the date of enactment of this Act” – Nov. 29, 1999. Presumably, the new law applies to any application filed after Nov. 29 regardless of whether the application claims priority from another filed prior to Nov. 29. A pending application filed before Nov. 29 could be protected against commonly assigned references with a continuation application filed on or after that date. This simple expedient should forever insulate the patent issuing from the continuation application from attacks based on commonly assigned references otherwise assertable as sec. 102(e) prior art. Some have also suggested that existing patents that were issued from applications filed before the change in sec. 103(c) might be retroactively “cured” under the AIPA by a reissue application. It remains to be seen whether this will work. Section 251 states that reissue will be permitted “[w]henever any patent is . . . deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent.” The language suggests that reissue is available only to correct defects in the patent specification or to correct errors in claiming the invention too broadly or narrowly. Nevertheless, courts have allowed reissue where the patent was asserted to be inoperative or invalid because of a failure to “claim” in a broader sense, such as a failure to claim priority from an earlier application. That a patent may be subject to sec. 102(e) prior art, however, is not a defect in the patent itself. Moreover, as to a patent granted prior to the change in sec. 103(c), there was no procedure that could have been taken during the original prosecution of the application to insulate the patent against commonly assigned sec. 102(e) prior art. It would seem, therefore, that when seeking to cure a patent granted prior to Nov. 29, it may be difficult to show that a defect or failure to claim some right existed, rendering the patent wholly or partly inoperative or invalid. As to a patent issued after Nov. 29 based on an application filed before that date, the applicant presumably would have had an opportunity to insulate the patent from commonly owned sec. 102(e) prior art by filing a continuation application. It is uncertain if the failure to do so will later be considered sufficient grounds to allow the patent to be retroactively cured by reissue. Finally, the AIPA in certain circumstances mandates the publishing of a patent application 18 months after the earliest priority filing date to which the application is entitled, whether or not a patent ever issues from it. Section 102(e) was also amended to provide that the published applications are prior art as of their filing date. These changes actually increase the likelihood that an organization’s own prior work will become sec. 102(e) prior art. The AIPA’s exclusion of commonly owned sec. 102(e) prior art is a boon for organizations seeking patents. With a little careful thought, they should be able to take maximum advantage of the new law. Donald M. Hill Jr. is a senior associate in the Charlotte, N.C., office of Alston & Birdand a member of the firm’s mechanical patent solicitation group.

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