Almost two weeks ago the United States Patent and Trademark Office issued two Federal Register Notices in anticipation of the U.S. converting from first-to-invent to a first-to-file regime. The first were the Changes to Implement First to File and the second was First to File Examination Guidelines. Both are important. The new regulations that make up 37 CFR are found in the former, but much of the meat and potatoes are found in the later. The Guidelines, which the USPTO says they are not obligated to follow, is where the Office spends most of the time comparing and contrasting old pre-AIA 102 with AIA 102. The Guidelines is also where the USPTO explains which cases they believe have been overruled (i.e., Hilmer and Metallizing Engineering) and which cases continue to have relevance. They also selectively cherry pick portions of the legislative history to back up their interpretations.
Frankly, we know that when the Supreme Court ultimately gets involved interpreting the AIA, which is a virtual certainty, the legislative history will play absolutely no role in interpreting the statute. This Supreme Court holds legislative history in near contempt. It is hard to argue with them on that point knowing how easy it is for something to be included into the legislative history. More interesting, however, will be whether the Federal Circuit will consider legislative history, or at least to what extent. But, as for now, the Patent Office is deferring to legislative history with respect to a number of items. On first glance nothing caught me as out of place particularly, and the Office has to rely on something given that Congress re-wrote the law and used different terminology for things that have had long-standing, well-known meanings.
Therefore, the question really has to be this: Did Congress mean what they said? Of course, that has multiple components: (1) Did Congress mean what they said in the actual text of the bill, which leaves a great many things open to interpretation; and (2) Did Congress mean what they said in the legislative history, which at times is some of the most clear writing you will ever read. The trouble, of course, is that they voted on the text, not the legislative history. Moreover, in one particular instance (relating to Metallizing Engineering) the USPTO relied on comments from Senator Leahy that only occurred after the Senate acted, which hardly seems reasonable to do give that the comment was after the fact and the exact type of remark that Justice Scalia and others seem to detest. How do we know that anyone other than one Senator believed that? How do we even know that was what that Senator believed when he voted? What a mess!
In justifying reliance on Senator Leahy’s comments from after the Senate acted on the America Invents Act the USPTO explained: “The Office’s role, however, is not to determine whether Congress could have enacted a statute that is clearer and more forceful, but rather it is to determine the most likely meaning of the statute that Congress actually did enact.” Of all the things said in the Guidelines that is probably the statement I have most trouble swallowing. The role is to interpret the statute as written.
It is black letter law — law that is universally followed by even the Supreme Court — that you only go to the legislative history where there is ambiguity in the statute. If the language used is clear and has meaning then you never get to the legislative history. Sadly, the legislative history is extraordinarily clear. We know what Congress seemed to want to do time and time again. Unfortunately, the text is likewise clear and in places in direct contradiction with what is in the legislative history. I feel confident in predicting the Supreme Court won’t look to the legislative history at all, and I suspect the Federal Circuit won’t either. If what the Federal Circuit has done with respect to pre-KSR law is any guidance they are going to look to the first level principles and find that many, if not all, are applicable to AIA 102 except for those that are directly and unequivocally overruled, such as Hilmer.
This stuff is dense and different and on so many issues there is at least a significant minority view. The best way to get prepare seems to be to read, listen and talk things through. Now form the “shameless commerce division,” I’ve been involved with the planning of 1 hour PLI Telephone Briefing on March 7, 2013, where John White will moderate a discussion between Steve Kunin (Oblon) and former Federal Circuit Chief Judge Paul Michel. The title of the PLI Briefing is: USPTO First-to-File Implementation Guidelines: What They Say and What They Mean. This is one that I am looking forward to attending myself. Steve will provide the detailed analysis of the new rules and Guidelines, Chief Judge Michel will react with what we can expect from the CAFC. I am anxious to hear what Judge Michel has to say about the USPTO relying so heavily on legislative history. For example, I am particularly interested in hearing what Chief Judge Michel suspects the CAFC approach will be to interpreting first-to-file. Should practitioners moving up through the PTAB to the CAFC or in litigation in the district courts be positioning themselves to make textual arguments primarily, or should they also be looking to the legislative history? I don’t know what Chief Judge Michel will say, but I do know the topic of legislative history and what to make of it is in the queue for discussion.
Of particular interest to me is also how the USPTO punted and did not take a position one way or another on whether there continues to be a public use exemption, saying:
Neither the AIA nor its legislative history expressly addresses whether the experimental use exception applies to a public use under AIA 35 U.S.C. 102(a)(1), or to a use that makes the invention available to the public under the residual clause of AIA 35 U.S.C. 102(a)(1). Because this doctrine arises infrequently before the Office, and is case-specific when it does arise, the Office will approach this issue when it arises on the facts presented.
Essentially, the USPTO seems to want to wait until the Federal Circuit decides the issue. But what does that mean for dealing with applications where a public use exception (if it remains) would defeat the prior art rejection? Will experimental public use remove a reference from a rejection? It would seem that if there is experimental public use then the invention would not be ready for patenting, but that comes from the Supreme Court’s interpretation of pre-AIA 102(b). Does that still have relevance? By not picking a lane with respect to the continued viability of the public use exception the USPTO has really muddied the waters.
Of course, the USPTO muddied the waters with respect to secret sales or secret use activity by picking a lane. The issue is whether Metallizing Engineering was overruled. On this particular issue the Office looked primarily to the legislative history and explained:
The starting point for construction of a statute is the language of the statute itself. A patent is precluded under AIA 35 U.S.C. 102(a)(1) if ‘‘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.’’ AIA 35 U.S.C. 102(a)(1) contains the additional residual clause ‘‘or otherwise available to the public.’’ Residual clauses such as ‘‘or otherwise’’ or ‘‘or other’’ are generally viewed as modifying the preceding phrase or phrases. Therefore, the Office views the ‘‘or otherwise available to the public’’ residual clause of the AIA’s 35 U.S.C. 102(a)(1) as indicating that secret sale or use activity does not qualify as prior art.
The Office’s interpretation of AIA 35 U.S.C. 102(a)(1) also ensures that the AIA grace period can extend to all of the documents and activities enumerated in AIA 35 U.S.C. 102(a)(1) that would otherwise defeat patentability. In addition, this interpretation avoids the very odd potential result that the applicant who had made his invention accessible to the public for up to a year before filing an application could still obtain a patent, but the inventor who merely used his invention in secret one day before he filed an application could not obtain a patent. Finally, the Office’s interpretation is consistent with the interpretation that was clearly expressed by the bicameral sponsors of the AIA during the congressional deliberations on the measure.
With respect to suggestions concerning what information concerning patentability must be disclosed to the Office (secret commercial sale or use), 37 CFR 1.56 provides that applicants have a duty to disclose all information known to be material to patentability as defined in 37 CFR 1.56, and there is no reason to treat public or non-public commercial sale or use or activity differently from other information.
With respect to comments that Metallizing Engineering and other forfeiture doctrines should be preserved because they serve important public policies, the Office notes that the choice of which public policies to pursue through the definition of prior art is made by Congress, not by the Office. Also, some of the purposes ascribed to these doctrines in case law appear to be ill-suited to or inconsistent with the AIA. The problem of delayed filing of applications is unique to pre-AIA 35 U.S.C. 102, under which an applicant can rely on a secret invention date in order to establish a priority date.
Time and time again the Guidelines respond to comments from stakeholders who criticized one approach or interpretation. Time and time again the Guidelines point out that it was Congress who did this. Most pointedly the USPTO explained this to those who said we ought not switch to first-to-file. I feel the USPTO pain, at least to some extent. The USPTO did advocate for the switch, so they are not blameless, but that ship has sailed and the USPTO has no choice in the matter. The law is the law regardless of how ill-conceived it is as a total package.
With respect to the legislative history associated with Metallizing Engineering, the USPTO quoted a variety of places in the legislative history where it does seem quite clear that at least those doing the writing/speaking thought Metallizing Engineering was being overruled. See footnote 8 of the First to File Guidelines. But resting this on a residual clause? Sure, at least some in the House and some in the Senate believe that “or otherwise available to the public” overrules Metallizing Engineering, but one has to get to the legislative history first.
And here I am at the end of the article and I’ve largely only discussed whether reliance on legislative history is misplaced, whether Metallizing Engineering is actually overruled and my discontent with the fact that the USPTO punted on the public use exception. There are more questions than answers it seems, and what that suggests to me is that patent attorneys and patent agents had better give conservative advice to clients. Since the statute is not explicit on overruling Metallizing Engineering how can you tell clients you are 100% sure it has been overruled? Can you suggest that there is still a public use exception with the USPTO punt on the issue, even though it would seem to make sense given the Supreme Court “ready for patenting” requirement? I think the best advice is simply this — assume the law is “no patent for you” unless you file first!
There is much more to write, so stay tuned. In the meantime, I will be present at the PLI First-to-File Briefing, and I’ll also be presenting at the PLI Patent Law Institute in San Francisco on March 18-19. My guess is that the buzz will all be first-to-file.