Jonah Patel
The topic of what constitutes prior art in a covered business method (CBM) proceeding is a complex one. CBM patents are defined in the America Invents Act (AIA) as patents that relate to data processing or operations used in financial services. CBM proceedings are tried before the Patent Trial and Appeal Board (PTAB), which decides whether a petition establishes that it is more likely than not that a claim of the challenged patent is unpatentable. In terms of prior art, there are specific requirements that must be met for it to be considered in a CBM proceeding. For example, a reference that is prior art under only 35 U.S.C. § 102(e) may not be asserted in a CBM review. Additionally, certain prior art cannot be raised in a CBM review, and there are differences in the availability of prior art when compared to IPR proceedings.
| Characteristics | Values |
|---|---|
| Mere recitation of known technologies | Computer hardware, communication or computer networks, software, memory, computer-readable storage medium, scanners, display devices or databases, or specialized machines, such as an ATM or point of sale device |
| Reciting the use of known prior art technology | Accomplishing a process or method, even if that process or method is novel and non-obvious |
| Combining prior art structures | Achieving the normal, expected, or predictable result of that combination |
| CBM proceedings | Tried before the Patent Trial and Appeal Board (PTAB) |
| CBM review | Cannot raise prior art under pre-AIA section 102(e) |
| CBM review | Cannot raise prior art under 35 U.S.C. § 102(e) |
| CBM review | Cannot raise prior art under pre-AIA 35 U.S.C. § 102(a) |
| CBM review | Cannot raise prior art under pre-AIA 35 U.S.C. § 102(b) |
| CBM review | Can raise prior art under AIA section 102(b)(2)(B) |
| CBM review | Can raise prior art under 35 U.S.C. § 101 and 35 U.S.C. § 112 |
| CBM proceedings | Challenges based on prior art under § 102(a) |
| CBM proceedings | Use of § 102(e) prior art |
| CBM review | § 101 challenge |
| CBM review | Limitations to the prior art available under §§ 102 and 103 |
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What You'll Learn
- Prior art that discloses the invention more than a year before the patent application
- Prior art that is described by pre-AIA 35 U.S.C. § 102(a)
- Prior art that is a patent or printed publication
- Prior art that is a patent application filed before the challenged patent's priority date
- Prior art that is a sale disclosing relevant aspects of the invention to the public
Prior art that discloses the invention more than a year before the patent application
In the context of covered business method (CBM) patents, prior art refers to information that has been made available to the public before the effective filing date of a patent application. This includes public knowledge or use of the invention, such as demonstrations, as well as previously filed patent applications. Notably, in the case of CBM patents, prior art specifically refers to information disclosed more than a year before the patent application date.
Prior art plays a crucial role in determining the patentability of an invention. It helps assess whether an invention meets the criteria of novelty, inventive step, and non-obviousness. Patent offices conduct prior art searches as part of the patent-granting process to identify any existing knowledge or disclosures that may impact the novelty or inventiveness of a claimed invention.
In the United States, inventors and their patent agents or attorneys are legally required to submit any references that may be relevant to the patentability of their claims. This includes disclosing any known prior art to the United States Patent and Trademark Office (USPTO). The patent examiner then evaluates the submitted information to determine if it qualifies as prior art and considers it when examining the patent application.
It is important to note that not all information disclosed before a patent application constitutes prior art. For example, trade secrets, confidential information, and unpublished work are generally not considered prior art. Additionally, disclosures made within a specific grace period, such as the 12-month grace period in the United States, may also be excluded from being considered prior art.
In the context of CBM patents, AIA § 18(a)(1)(C) specifically addresses prior art, stating that a challenge to a claim must be supported by prior art that discloses the invention more than one year before the patent application date. This provision ensures that only relevant and timely prior art is considered when evaluating the patentability of inventions within the scope of CBM proceedings.
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Prior art that is described by pre-AIA 35 U.S.C. § 102(a)
Prior art is a body of knowledge that is made available to the public, and it is used to determine whether an invention is novel and non-obvious. Pre-AIA 35 U.S.C. § 102(a) defines the prior art that will prevent the grant of a patent on a claimed invention unless an exception in AIA 35 U.S.C. 102(b) is applied.
The AIA 35 U.S.C. 102(a) provision specifically states that:
> A person shall be entitled to a patent unless—
>
> - (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
> - (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
The categories of prior art documents and activities are outlined in AIA 35 U.S.C. 102(a)(1), while AIA 35 U.S.C. 102(a)(2) defines the categories of prior art patent documents. These documents and activities are used to assess whether an invention is novel or non-obvious. Issued patents, published applications, and non-patent printed publications are the types of documents on which a prior art rejection under 35 U.S.C. 102(a)(1) may be based. In contrast, prior art rejection under 35 U.S.C. 102(a)(2) relies solely on US patent documents.
It is important to note that the AIA has introduced significant changes regarding prior art documents and activities. One notable difference is that the AIA takes a global perspective on prior art disclosures, eliminating the requirement for public use or sale activity to occur "in this country." Additionally, the AIA measures the availability of a US patent document as prior art from the effective filing date of the claimed invention, which takes into account both foreign priority and domestic benefit dates. This differs from the pre-AIA 35 U.S.C. 102 approach, where the availability of a patent document as prior art was determined from either the US application date or the invention date by the applicant.
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Prior art that is a patent or printed publication
Prior art is a concept in patent law used to determine the patentability of an invention, specifically whether it meets the novelty and inventive step or non-obviousness criteria for patentability. In most patent systems, prior art is defined as anything disclosed or made available to the public before the effective filing date of a patent application.
Printed publications, such as scientific and technical books and journals, are also considered prior art if they are publicly accessible. This means that they have been disseminated or made available to persons skilled in the relevant subject matter, who can locate them with reasonable diligence. For example, a doctoral thesis indexed and shelved in a library is considered publicly accessible and thus constitutes prior art.
It is important to note that the definition of prior art varies across different national, regional, and international patent systems. Additionally, certain types of prior art may not be raised in a Covered Business Method (CBM) review, as defined by the AIA.
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Prior art that is a patent application filed before the challenged patent's priority date
In the context of a covered business method (CBM) patent review, prior art that constitutes a patent application filed before the challenged patent's priority date is a critical aspect. This type of prior art plays a significant role in determining the validity of the patent under review.
A CBM patent, as defined by the America Invents Act (AIA), relates to "a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service." It is important to note that a CBM patent does not encompass "technological" inventions.
When it comes to prior art in the form of a patent application filed before the challenged patent's priority date, there are several key considerations:
- Timing Provisions: The Federal Circuit has clarified that the timing aspect of prior art is governed by specific provisions in the statutes. For example, Section 102(a) includes the phrase "before the invention thereof by the applicant for patent," while Section 102(b) mentions "more than one year prior to the date of the application for patent in the United States." These provisions ensure that prior art has the necessary temporal relationship to the challenged patent.
- Interpretation of "Printed Publication": The term "printed publication" in Section 102(e)(1) has been interpreted by the Federal Circuit to bar patentability based on a published patent application filed before the invention. This interpretation aligns with the congressional purpose of providing a cost-effective and efficient mechanism to challenge patent validity.
- Distinction Between Filing and Publication Dates: An important distinction arises when a patent application is filed before the challenged patent's priority date but is published afterward. In Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., the Federal Circuit affirmed that such applications qualify as prior art under 35 U.S.C. § 102(e) for Inter Partes Reviews (IPR). This decision highlights that the filing date, rather than the publication date, is the critical factor in determining prior art status.
- PTAB's Role: The Patent Trial and Appeal Board (PTAB) plays a crucial role in interpreting and applying prior art in CBM proceedings. In Patent Quality Assurance, LLC v. VLSI Tech. LLC, the PTAB permitted IPRs based on prior-filed, later-published patent applications. This decision underscores the PTAB's interpretation of relevant statutes and their impact on determining prior art.
- Exclusion of Certain Prior Art: It is worth noting that not all prior art can be used in a CBM review. Specifically, pre-AIA Section 102(e) prior art may be excluded in CBM proceedings. This exclusion highlights the importance of understanding the specific statutory provisions and their interpretations in determining the eligibility of prior art.
In conclusion, prior art that constitutes a patent application filed before the challenged patent's priority date is a crucial aspect of CBM proceedings. It involves interpreting statutory provisions, understanding the distinction between filing and publication dates, and ensuring compliance with the relevant timing requirements. The PTAB plays a vital role in evaluating and applying prior art in these proceedings, ultimately contributing to the determination of the validity of the challenged patent.
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Prior art that is a sale disclosing relevant aspects of the invention to the public
Prior art refers to any information that is publicly disclosed or available before a patent application is filed. It is important to note that prior art prevents individuals from patenting ideas that already exist in the public domain or in previously filed patent applications.
In the context of a sale disclosing relevant aspects of the invention to the public, prior art can include any commercial use or sale of the invention that occurred before the filing of the patent application. This includes situations where an individual or company publicly shared or demonstrated the invention, offered it for sale, or made it available to the public in any way before filing for a patent.
For example, in Actifio Inc. v. Delphix Corp., the Patent Trial and Appeal Board (PTAB) noted that brochures distributed to the public before the patent application could constitute prior art. It is essential to disclose any commercial use, sale, or public disclosure of the invention to the patent office, as these activities can impact patent rights.
To determine if a sale or public disclosure constitutes prior art, it is crucial to examine the level of detail and specificity of the information revealed. A disclosure must provide sufficient detail to enable someone skilled in the relevant field to understand and recreate the invention. This is often referred to as an "enabling disclosure" or "enabling teaching."
In summary, prior art that is a sale disclosing relevant aspects of the invention to the public refers to any commercial use or sale of the invention that occurred before the filing of the patent application, with a focus on the level of detail disclosed to the public.
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Frequently asked questions
A covered business method (CBM) patent is defined in section 18 of the America Invents Act (AIA) as a patent that "claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service," but is not for a "technological" invention. CBM proceedings are tried before the Patent Trial and Appeal Board (PTAB).
Prior art in a CBM proceeding refers to evidence that can be used to challenge the validity of a patent. This includes patents, printed publications, and prior knowledge or use of the invention.
Two types of documents may be relied upon under § 102(e) to show that claims are unpatentable: (1) an application for a patent that is published under § 122(b), or (2) a patent granted on an application.
Yes, there are limitations on the prior art that can be used in a CBM proceeding. For example, prior art under § 102(e) may not be asserted in a CBM review, and only a ground of unpatentability that could be raised under § 102 or § 103 can be used.
In IPR proceedings, a petitioner may only assert grounds of challenge that can be raised under 35 U.S.C. § 102 or 305 U.S.C. § 103 and only on the basis of prior art consisting of patents and printed publications. In CBM proceedings, the statute explicitly limits challenges to those based on prior art under § 102(a).
