Anticipating New References: Predicting the Contours of the New "Otherwise Available to the Public" Category of Prior Art

IntroductionIn September, 2011, Congress enacted the Leahy-Smith America Invents Act ("America Invents Act"), representing the most significant reform of the United States patent system since 1952.1 As part of the move from a first-to-invent to a first-to-file system, the Act modifies the prior art sections of the patent statute.2 Prior art is the type of knowledge available to a person having ordinary skill in the art, and, under the Patent Act, is used to judge an invention's novelty.3 The new novelty section, 102, retains the four familiar sources of prior art from the previous Patent Act-inventions in public use, on sale, described in a printed publication, and patented.4 The new novelty section, however, also includes a new prior art category: inventions "otherwise available to the public."5Because the four other categories of prior art have been incorporated into the Patent Act since 1836, they have widely understood meanings and afford a degree of certainty for patent seekers and patent challengers.6 "Otherwise available" art, however, is wholly uncharted territory.7 At the same time, the broad interpretations given to the retained prior art categories raise questions about what is left, and what new types of references the drafters intended to capture with this category.8 Indeed, the new novelty section has been criticized on these grounds.9 At least one academic has called for Congress to revise or eliminate the new language, arguing that the "otherwise available" category will generate years of unnecessary litigation to establish only very limited expansions of the public domain.10Barring such a drastic and decisive measure, however, the Patent and Trademark Office (PTO), the U.S. district courts, and particularly the U.S. Court of Appeals for the Federal Circuit, which has exclusive appellate jurisdiction over patent cases, will be called upon to interpret the provision.11 Meanwhile, patentees and their counselors will operate in a period of uncertainty, because as of March 16, 2013, the novelty provisions of new section 102 will govern all new patent applications, as well as subsequent litigation of those patents.12 Determining what "otherwise available" art will include is thus a consequential issue.13This Note argues that the PTO and the courts should view the new "otherwise available to the public" category of prior art as an opportunity to extend the public accessibility standard of the printed publication bar to disclosures in non-documentary form.14 After giving a brief overview of the U.S. patent system, Part I first discusses the changes made to the novelty provisions of the patent statute under the new America Invents Act.15 It then examines the policies underlying the statutory bars carried forward from the previous Patent Act and the development of standards governing those bars.16 Part II draws insights from the development of the retained statutory bars, noting that each bar has been interpreted broadly to effectuate its underlying policy goals.17 Part II also analyzes the legislative history of the "otherwise available" category.18 Part III argues that the "otherwise available" category of prior art shares an underlying policy goal with the printed publication bar, and demonstrates that the standards developed under the printed publication bar can be easily adapted to non-documentary references.19 Then, Part III illustrates some new types of references that could immediately become prior art under "otherwise available."20 Finally, Part III argues that the most meaningful addition may lie in the category's capacity for reaching unanticipated new technologies and norms for disseminating information that may not clearly fit within the other preexisting categories of prior ait.21I. Section 102 Novelty Provisions, New and OldSection A of this Part provides a brief overview of the United Sutes patent system and the statutory requirement of novelty.22 Section B discusses the relevant goals of the America Invents Act, and identifies the changes made to the novelty provisions of the Patent Act. …