New Class Of Secret Prior Art Makes A Patent Go… BOOM!!

When companies file for patent protection, one of the key unknowns is the scope of the “prior art.” But what happens when the best prior art is “secret”? And can “secret” prior art come from inventions conceived in Russia? Answer: Yes!

When a Patent Examiner finally picks up your patent application to review it, the main focus of the examination is whether something in the prior art already discloses the inventions you are hoping to claim.

If the Examiner finds no prior art that anticipates or renders your claims obvious, then you are on the verge of getting a notice of allowance and a shiny new patent!

So are you home free to start suing all your copycat competitors?

Well hold on, because there may be prior art that the examiner never could have found, but can nevertheless stop your patent in its tracks!

In Solvay v. Honeywell (Fed. Cir. Feb. 12, 2014), the Federal Circuit found Solvay’s patent claims to be invalid over an invention that Honeywell privately experimented on in the U.S. following instructions developed by inventors in Russia!

In this case, Honeywell had a Research Agreement with the Russian inventors. Under this research Agreement, Honeywell received from the Russian inventors the instructions to manufacture ozone-friendly HydroFluoroCarbons (HFCs). Honeywell engineers manufactured the HFCs in the U.S. under the Agreement before Solvay filed for a U.S. patent application on the same product.

According to a majority of a 3-judge panel of the Federal Circuit, the authorized reduction to practice (in the U.S.) of the Russian invention created prior art that invalidates the Solvay patent application under 35 USC 102(g)(2), which reads:

A person shall be entitled to a patent unless… before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.

Under the Solvay analysis, prior art include secret acts that reduce an invention to practice in the U.S., even though the invention was conceived in Russia by foreign inventors who never come to the U.S.

While the majority included the Chief Judge Rader, Judge Newman vigorously objected in a dissenting opinion to what she perceives as an unjustified “new class of secret prior art.” Judge Newman argued that the majority improperly held that:

“a privately performed experiment, without publication or public knowledge or use or sale or inclusion in a United States patent application, is invalidating “prior art.”

Solvay Helps U.S. Companies that Operate Internationally

Assuming Judge Newman’s view remains a minority view, the Solvay decision opens up a novel patent defense strategy for companies who operate in the U.S. but have inventors who act outside the U.S.

Specifically, companies can protect themselves by taking an invention that was conceived OUS (outside the U.S.) and reducing it to practice in the U.S. to create a 102(g)(2) prior art.

The prior art is created, according to this decision, even if you do not publish, publicly use, sell, or file a U.S. patent application! The inventors never even have to come to the U.S.!

However, in order to get the benefits of this litigation defense strategy, it will of course be important to thoroughly document the dates and the technical details of the reduction to practice so that those facts can be established in litigation.

Note that this strategy of using 102(g) secret prior art would only apply in litigation in District Court, Post-Grant Review, or in the International Trade Commission (ITC). It would not apply, for example, to inter partes review (IPR) because IPR must be based on printed publications.

Personally, I found that this decision breathes new life into 35 USC 102(g). Although this statute was eliminated from the America Invents Act, it still applies to all applications that were filed before March 16, 2013. As such, 102(g) can be used to invalidate patents until 2033 (plus any patent term adjustments (PTA) that extend patent term beyond 20 years from filing)!!

If you would like to discuss how to position your business to take advantage of offensive or defensive opportunities created by decisions like Solvay, please give me a call.

To your success!