Overview of the Leahy-Smith America Invents Act: What Is The Practical Effect of First-to-File for Patent Applicants

James G. McEwen*


The American Invents Act is a result of pressures from diverse industries and groups.  From international companies and academics, there has been a desire to have the U.S. conform to international standards, and specifically, to switch from its first-to-invent system to a first-to-file system.[1]  Furthermore, in view of the high costs of litigation, there was pressure from electronics companies to reduce the uncertainties of litigation by clarifying the law in regards to willful infringement and inequitable conduct, eliminating “secret” prior art, and retaining the prior user defense.[2]  There were conflicting pressures from the electronics and pharmaceutical industries in relation to making changes to various types of damages deemed excessive, such as treble damages for willful infringement, as well as mechanisms for making equitable factors play a greater role in determining whether to enjoin infringement.[3]  Additional issues related to perceived abuses of venue, as well as ensuring patent quality and reducing pendency by enhancing the obviousness standard and increasing funding for the United States Patent and Trademark Office so that more examiners could be hired to deal with the increased number of patent applications being filed.

These pressures and issues have been at the forefront of the patent community since the American Inventors Protection Act was enacted on November 29, 1999[4] and amended by the Intellectual Property and High Technology Technical Amendments Act of 2002, and they have pitted different elements of the patent community against each other.[5]  Starting in 2004, two major reports revisited these issues with an expanded emphasis on patent quality and enforceability.  The first report, issued by the Federal Trade Commission, is titled To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy.[6]  The second report, issued by the National Academies Board on Science, Technology, and Economic Policy is titled A Patent System for the 21st Century.[7]  Upon issuance of these reports, the National Academies Board on Science, Technology, and Economic Policy and the American Intellectual Property Law Association (“AIPLA”) further promoted the need for change in a series of Conferences on Patent Reform in 2005.[8]  These conferences and reports focused their discussion on changing the novelty requirement to comport with a first-to-file system, emphasizing the need for reinvigorating the obviousness standard, and reducing litigation risks and costs.[9]

These reports and the growing call for change led to the first serious attempt to make substantial changes to the U.S. patent system in 50 years when, on June 8, 2005, Representative Lamar Smith, Chairman of the House Subcommittee on Courts, the Internet, and Intellectual Property, along with several co-sponsors, introduced H.R. 2795.[10]  Popularly known as the “Patent Reform Act of 2005,” the omnibus bill overhauled multiple aspects of patent practice.[11]  The Patent Reform Act overhauled basic procedures including the filing of patent applications,[12] how patent practitioners are regulated,[13] and even how patents are enforced.[14]  In view of the scope of the Patent Reform Act, a great deal of interest and scrutiny surrounded certain major proposed changes, and especially a proposal to switch to a first-to-file system.  However, other proposals, including changes to the award of damages, pitted independent inventors against large patent owners, and the pharmaceutical industry against the consumer electronics industry.[15]  Due to the scope of this bill, these conflicting constituencies prevented passage of the Patent Reform Act of 2005 and like bills in the following years.

With each year, however, more of the problems in the two reports were addressed by the Courts.  For instance, the Supreme Court clarified the law on obviousness[16] and, perhaps more significantly, made injunctions harder to obtain in IP cases.[17]  Also significant were changes in the law at the Circuit Court level, where courts made venue transfer easier to obtain[18] and reduced damage by clarifying they should be calculated.[19] As the courts resolved these issues, there were fewer problems needing to be solved by legislation, and thus fewer contested issues needing resolution.  The result was a simplified Patent Reform Act in 2011, which issued as the America Invents Act signed by President Obama on September 16, 2011.[20]  Below is an overview of the more notable portions of the America Invents Act, along with a discussion on potential pitfalls of each section.

Changes to Meet International Norms

Perhaps most prominent of the changes introduced by the America Invents Act is section 3, which changed the law from first-to-invent to first-to-file.  Sort of.   Under the new law, 35 U.S.C. § 102 was changed to have only two novelty parts in 35 U.S.C. §102(a) that can be used to reject claims.  35 U.S.C. §102(b) through (d) include four exceptions to these novelty parts.  Two exceptions were designed to preserve the existing grace period, and two other exceptions broaden the patentability of patents for large patent holders.

The changes, in a broad sense, replaced dates of invention with “effective date”, thereby removing any semblance of a first-to-invent system.  The changes further made the novelty defeating acts available wherever they occur in the world, thereby removing requirements related to occurrences in the United States.   In a sense, these changes were an attempt to simplify a complex system.

However, in attempting to make the changes simple, it appears Congress has failed.  Under the prior 35 U.S.C. §102, Congress needed only 416 words to convey a complex hybrid system of first-to-invent and first-to-file provisions.  In contrast, under the new system of purely first-to-file, excluding exceptions in 35 U.S.C. §102(b) and (c) relating to commonly owned inventions, Congress needed 433 words.  As will be detailed below, these additional words may have some harmful effects for patent owners and applicants.

Two novelty parts: 35 U.S.C. §102(a)(1) and (a)(2)

Under the new 35 U.S.C. §102, there are two classes of prior art: 35 U.S.C. 102(a)(1) which relates to prior art dates relative to the effective filing date of the application, and 35 U.S.C. §102(a)(2) which relates to conflicts between inventions in different applications.  Specifically, both classes of prior art are defined as follows:

35 U.S.C. §102(a)(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

35 U.S.C. §102(a)(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.

However, in creating these new categories, there are a number of issues to be resolved.

1.       Problem: “otherwise available to the public”

In crafting 35 U.S.C. §102(a)(1), Congress used a number of familiar terms.  Terms such as “patented”, “printed publication”, “public use”, and “on sale” have been well defined under the prior law.  By using such known terms, patent applicants and owners should expect some continuity in interpretation, which should reduce litigation uncertainty (and hence legal costs).  However, Congress added a new term into the mix: prior art which is “otherwise available to the public”.  There is no indication as to what this term means.  All that is known is that this category of prior art must be something other than patented, printed publication, in public use, on sale.

While no meaning is expressed in the America Invents Act, it is instructive to note that under the 2005 Patent Reform Act, a similar term —“publicly known”— appears and was defined in 35 U.S.C. § 102(b)(3) consistent with existing trade secret law.[21]  Under trade secret law, trade secrets are often defined in terms of whether information has been made available to the public through distribution of a completed product.[22]  In essence, if a member of the public can readily reverse engineer a product such that the underlying technology, method, or method of manufacture can be understood, there is no trade secret protection for that information.[23]  Given the present state of reverse engineering technologies, it is likely that almost any release of a product would work as a potential prior art event under the new 35 U.S.C. §102(a).[24]

As an illustration of how this might represent a change, lets look at the facts in Motionless Keyboard Co. v. Microsoft et al.[25]   In Motionless Keyboard, the inventor of a new keyboard showed his keyboard to investors, a friend, a business partner  and a typist prior to filing an application.  The Federal Circuit found that the mere visual display was not sufficient to create a public use for purposes of 35 U.S.C. §102.  However, it is not hard to imagine that a court, faced with similar facts, would find that this visual display was sufficiently accessible to the public as to be otherwise available to the public and thus represent a bar under new 35 U.S.C. §102(a)(1).Thus, whether a non-public event involving the invention, such as licensing of software, or mere public display will be considered “otherwise available to the public” will not be clear until courts interpret the phrase in a more definitive manner, but patent applicants need to be conscious that acts which previously did not harm patentability are now more likely to create a prior art bar.

2.       Problem: What is “public use” under 35 U.S.C. §102(a)(1)?

As noted above, 35 U.S.C. §102(a)(1) uses a number of terms which are consistent with prior law.  One such term is public use.  As defined in Invitrogen Corp. v. Biocrest Manufacturing L.P.[26], a public use includes any uses accessible to the public, as well as secret uses to the extent the use is for commercial exploitation of the invention.  In this way, patent applicants were faced with a choice at the time of commercialization: either maintain the invention in secrecy or file a patent application.

Under the new law, while 35 U.S.C. §102(a)(1) appears to use the same definition of public use, Congress also revised 35 U.S.C. §273 to include any internal commercial use.   Specifically, under new 35 U.S.C. §273, if a company is making secret commercial uses of the invention more than 1 year before effective date, the company can keep using the invention as a prior user.  However, if public use had the same meaning under 35 U.S.C. §102(a)(1) as it did under the prior law discussed in Invitrogen, this same commercial use would have invalidated the claim thereby also allowing the prior user to continue using the invention.  In order to read both provisions consistently, it appears that the prior definition of public use should no longer include secret commercial use and be solely limited to uses in public.  However, until a court definitively rules on whether prior user rights exist in addition to the traditional definition of public use or narrows the definition of prior user rights, patent applicants and owners should assume that secret commercial uses are still patent defeating events.

3.       Problem: What is “effectively filed” under 35 U.S.C. §102(a)(2)?

One of the intended changes made by Congress is to increase the scope of filing dates available to defeat patentability.  For this reason, Congress drafted 35 U.S.C. § 102(d) to define an effective filing date as the date of filing for U.S. patent or patent publication, or filing date of foreign priority application.  This provision at least partially overrules In re Hilmer.[27]  The scenario in an in re Hilmer situation is that a first prior art patent was first filed in a foreign country, a second patent application containing the invention was filed second in foreign country, a third prior art patent was first filed in US claiming priority to the first patent foreign application, and a fourth patent application containing the invention was later filed in US but claimed priority to the second patent application.  Under in re Hilmer, the prior art patent could not use its earliest priority date (i.e., the filing date of the first patent application), whereas the invention could use its earliest filing date (i.e., the filing date of the second application).  This rule meant that, in many cases, patent applicants were able to obtain patents even where they were not the first-to-file anywhere in the world so long as their foreign filing date preceded a prior art application’s U.S. filing date.  By removing this rule, patent applicants will have a harder time obtaining patents, especially in rapidly evolving arts where it is common to see the same or similar patent applications filed within months of each other.

That being said, 35 U.S.C. § 102(d) has its limits.  For instance, and perhaps significantly, 35 U.S.C. § 102(d) does not allow the use of a foreign application priority date unless that application also is later filed in the United States.   This creates a significant gap in prior art dates since many patent applications are not filed in the United States, and this is especially true as companies concentrate their filing dollars on new markets such as China.

4.       Problem: What is the status of PCT applications?

It also creates an issue as to the status of PCT applications claiming foreign priority dates.  Specifically, for purposes of U.S. law, PCT applications are considered U.S. applications to the extent that they designate the United States.[28]  Further, the publication of the PCT application is considered a U.S. patent publication under 35 U.S.C. §374.  While the use of the filing dates for PCT applications was previously limited to only uses of U.S. priority dates for published applications or the international filing dates where the publication was in English[29], 35 U.S.C. §§ 102 and 374 have been revised to eliminate the English and U.S. filing requirements.  As such, except in the odd case where the United States is not designated in the PCT application, any foreign priority date for all PCT publication should be considered the effective filing date for purposes of 35 U.S.C. §102(a)(2).  And as this is regardless of whether a national stage application is even filed in the United States.  Therefore, where applicants are not certain they want to proceed with a U.S. filing but wish to prevent competitors from patenting the same invention in the United States, PCT applications would seemingly provide a beneficial protection mechanism.

5.       Problem: What is “the effective filing date of the claimed invention” under 35 U.S.C. § 102(a)?

In order to implement 35 U.S.C. §102, a universal definition needs to exist for a date of filing versus dates of invention. In so doing, Congress created an apparent problem for U.S. applicants.  Under new 35 U.S.C. §100(i), the effective filing date for the claimed invention is as follows:

(A) the actual filing date of the patent or the application for the patent containing a claim to the invention; or

(B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, or 365(c). (emphasis added).

This definition creates two different priority dates for U.S. applications: one based upon the written description contained in a prior application, and another based upon what was claimed in the first application.  The difference in terminology could be significant since many U.S. applicants do not claim priority to another application, and therefore the scope of which claim has a priority date is dependent on what claims were in the application as filed.

By way of example, assume a U.S. application is first filed with claims directed to embodiment A, but the specification contains embodiments A and B.  While the claims are entitled to the original filing date, if the applicant tries to introduce claims to embodiment B, technically there is no effective filing date for the new claims unless the original claims are generic to both embodiments A and B.  This is not an uncommon occurrence since, often during prosecution, applicants will add new claims to new features based upon prior art and market conditions.  While this problem can be cured through the filing of a continuation or divisional application, the added expense of maintaining two applications and patents represents a problem for applicants.  As such, in comparison to foreign applicants who normally use a foreign priority date, U.S. applicants face a potential trap for the unwary where the originally presented claims are too narrow to cover all possible inventions in the application.

Four Exceptions under 35 U.S.C. §102 to the Two Novelty Parts: 35 U.S.C. §§ 102(b) & 102(c)

While the U.S. did transition to a first-to-file system under 35 U.S.C. §102(a), there remained a strong constituency which argued for maintaining the 1 year grace period available to inventors under the prior system.  This grace period was especially advantageous for small companies and individual inventors who could use the grace period to determine the market value of their invention and otherwise perfect the invention prior to investing in a patent.  As a compromise, Congress attempted to maintain the 1 year grace period for disclosures by the inventor under 35 U.S.C. §§102(b)(1) and (2).  Congress also provided a huge benefit to large patent portfolio holders by taking the “commonly owned” provisions of prior 35 U.S.C. §103(c), and making these same exceptions available for defeating novelty under 35 U.S.C. §§102(b)(3) and (c).  These exceptions seemingly increase the amount of subject matter which is available to patent applicants and reduce the extent that their own inventions are usable as prior art.  However, there remain issues as to the scope of these exceptions as will be detailed below.

1.       35 U.S.C. §102(b)(1): 1 Year grace period

Perhaps the most noticeable of the exceptions is the retention of the 1 year grace period.  Under the prior version of 35 U.S.C. §102(b), acts which would otherwise constitute a prior art bar under 35 U.S.C. §102(a) were not patent defeating events if these acts were performed by the inventor within 1 year of the filing of a U.S. application.  In order to preserve this same basic right, 35 U.S.C. §102(b)(1) creates a 1 year grace period for public disclosures under 35 U.S.C. § 102(a)(1).  This grace period extends to disclosures “directly or indirectly” from the inventor or joint inventor, as well as to public disclosures by another who derived the invention from the inventor’s prior disclosure.  While seemingly a change from existing 35 U.S.C. §102(b) practice, this merely re-codifies how prior versions of 35 U.S.C. §§ 102(a) & 102(b) operated by allowing the inventor to file Declarations under 37 C.F.R. §1.132 to show that the disclosure was derived from the inventor.[30]  As such, in many ways, inventors who could rely on the prior 1 year grace period should be able to do the same under the new 35 U.S.C. §102(b)(1).

a.       Problem: “disclosure” under 35 U.S.C. §102(b)(1) does not match language of “public” under 35 U.S.C. §102(a)(1)

While in many ways the new 35 U.S.C. §102(b)(1) should operate like the grace period in prior 35 U.S.C. §102(b), Congress did not make life so simple.  Specifically, 35 U.S.C. §102(a)(1) provides a bar to patentability where the subject matter was previously “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public”, 35 U.S.C. §102(b)(1) does not use any of these categories.  Instead, 35 U.S.C. §102(b)(1) only provides a grace period for public “disclosures” of the inventor without defining what a disclosure it.  While it is possible for Courts to, in light of the intended purpose of providing a comprehensive grace period for acts by the inventor, interpret a “disclosure” as being at least “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public to be consistent” with 35 U.S.C. §102(a)(1), there is no requirement for the Courts to do so.

To illustrate the issue, a common definition of a “disclosure” includes revealing the information.[31]  Therefore, it would appear that any publication or patent would certainly qualify as a revelation of information.  However, sales can be done privately, and public uses can be done privately without revealing information about the invention.  These sales and commercialization efforts would not have been a bar to patentability under prior law if an application was filed within 1 year, but it is uncertain if these same activities still qualify for the grace period under new 35 U.S.C. §102(b)(1).  Therefore, patent applicants need to presume that 35 U.S.C. §102(b)(1) is not necessarily coextensive with the requirements of 35 U.S.C. §102(a)(1), and ensure that they file an application prior to selling or using the invention.

And while it is seemingly clear that a publication would be a disclosure entitling the inventor to the one year grace period, the best practice remains to ensure that an application is filed prior to publication also.

2.       35 U.S.C. §102(b)(2): Same invention in different applications

In order to preserve some of the protections currently afforded to applicants under prior 35 U.S.C. §102(e), Congress created another exception.  Under 35 U.S.C. §102(b)(2), if the same invention exists in different applications under 35 U.S.C. § 102(a)(2), this will not be a bar to patentability if the invention described in the other application was filed by the same inventor, was derived “directly or indirectly” from the inventor,[32] or was publicly disclosed by the inventor “directly or indirectly” from the inventor.[33]  In many ways this mimics existing law as under 35 U.S.C. §102(e), an inventor was entitled to prove that the claimed subject matter that appeared in another application was the inventors or derived from the inventor using a Declaration under 37 C.F.R. 1.132.[34]  Therefore, outside of a change in statutory sections, applicants will not likely find a great deal of difference in how these situations are resolved.

3.       Movement of Former 35 U.S.C. § 103(c) to 35 U.S.C. § 102

While the exceptions in 35 U.S.C. §102(b)(1) through (2)(B) appear to provide a potential lessening in what is patentable as compared to prior law, 35 U.S.C. §102(b)(2)(C) and 35 U.S.C. §102(c) appear to dramatically increase the ability of owners of large patent portfolios to obtain patents.  Specifically, 35 U.S.C. §102(b)(2)(C) has taken the exception to obviousness found in former 35 U.S.C. 103(c), and applied to novelty.  Since holders of large patent portfolios often face problems caused by multiple copending applications having the same or similar descriptions of like technologies, this change should prove beneficial to these owners.

To illustrate this change, assuming a Company has patent applications A and B with the same subject matter in each application, but patent application A was filed previously.  Under prior law, the claims in application B could be anticipated by the disclosure in patent application A under 35 U.S.C. §102(e).  However, since patent applications A and B are commonly owned, the claims in application B cannot be rendered obvious using the disclosure in patent application A due to 35 U.S.C. §103(c)(1).  Thus, so long as there was any new description in patent application B as compared to patent application A, the claims in patent application B could be made patentable.

However, if patent application A included all of the subject matter of patent application B, the claims of patent application B could not become patentable. A famous example of this occurred at Polaroid where two inventors, Land and Rogers, had their joint application rejected due to their individual research being previously filed .[35]  Thus, for prolific inventors working in the same laboratory (and especially if using the same patent counsel), there was always the danger that an earlier filed and more complete application would prevent the issuance of a later filed and less complete application.

This latter issue has largely been resolve under new 35 U.S.C. § 102(b)(2)(C).  Under this new law, even if patent application A has the exact same disclosure as patent application B, patent application A cannot anticipate patent application B under 35 U.S.C. § 102.  Therefore, as holders of large patent portfolios have the greatest likelihood of this occurrence, this change is likely to greatly increase their ability to obtain broad coverage for all of their inventions resulting from a common research drive.

This idea was similarly carried forward to joint development agreements.  Under prior law, the CREATE Act (Pub. L. 108-453, 118 Stat. 3596 (2004)) created another exception to what prior art was usable for obviousness: joint development agreements.  Basically, inventors working under a joint development agreement would be able to remove, for purposes of obviousness, prior art applications for each member of the joint development agreement if that prior art was only usable under 35 U.S.C. §102(e).  Under the America Invents Act, 35 U.S.C. §102(c) now prevents use of these same prior art applications for purposes of novelty where the inventors were under a joint development agreement.  While joint development agreements do occur between private companies, they are more likely between Universities and companies sponsoring research.  It is therefore likely that this change should enhance the ability of parties to such research agreements to obtain broad patent coverage for their joint research projects.


It is important to realize that America Invents Act is first significant change in U.S. Patent Law in 50 years.  Its passage was based, not just on the belief that the changes improve efficiency and encourage innovation, but that the changes by themselves create new jobs.  While the changes themselves will likely not increase jobs outside of the hiring of new patent examiners, these changes were long sought and represent an important step in harmonizing U.S. law with international standards.  And while there are multiple other changes which will be the subject of a later feature article, the most dramatic change has been the changes to the U.S. novelty standard under 35 U.S.C. 102.  These changes will have certain benefits as noted above, but will also create a great deal of uncertainty which will take years to sort out in court.  Therefore, it is important for applicants and patent owners to recognize the need, now more than ever, to engage competent U.S. counsel to ensure that their inventions survive and thrive in a first-to-file environment.

* Partner, Stein McEwen, LLP, Washington, D.C.; B.S.A.E, University of Texas; J.D. with honors, The George Washington University; admitted to practice in the Commonwealth of Virginia and the District of Columbia; registered to practice before the U.S. Patent and Trademark Office.  His biography is online at http://www.smiplaw.com/pro_mcewen.cfm; he may be reached at 202-216-9505 or jmcewen@smiplaw.com. The opinions expressed in this article do not represent the official position of Stein McEwen, LLP or the author’s former employers.

[1] See generally William S. Thompson, Reforming the Patent System for the 21st Century, 21 AIPLA Q.J. 171 (1993).

[2] Patent Reform Act of 2005, H.R. 2795, 109th Cong. §§  3, 6 (2005).

[3] Id. at §§ 6–7.

[4] American Inventors Protection Act of 1999, Pub. L. No. 106-113, 113 Stat. 1501 (2000).

[5] High Technology Technical Amendments Act of 2002, Pub. L. No. 107-273, 116 Stat. 1758 (2000).

[6] Fed. Trade Comm’n, To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy, (2003), http://www.ftc.gov/os/2003/10/innovationrpt.pdf.

[7] The National Academies Board on Science, Technology, and Economic Policy, A Patent System for the 21st Century (2004), http://www.nap.edu/books/0309089107/html [hereinafter System for the 21st].

[8] The National Academies Board on Science, Technology, and Economic Policy, American Intellectual Property Law Association, and Federal Trade Commission, Conference On Patent Reform (2005), http://www.aipla.org/Content/ContentGroups/Meetings_ and_Events1/Roadshows/20058/Transcript_6-9-05.pdf [hereinafter Conference on Reform].

[9] See generally System for the 21st, supra note 7; Conference on Reform, supra note 8; Fed. Trade Comm’n, supra note 6.

[10] Patent Reform Act of 2005, H.R. 2795, 109th Cong. (2005).

[11] Id.  Additional information, including status information, related to H.R. 2795 can be found at Thomas – U.S. Congress on the Internet, http://thomas.loc.gov/.

[12] Patent Reform Act of 2005, H.R. 2795, 109th Cong. § 3 (2005).

[13] Id. §§ 3, 8–9.

[14] Id. §§ 3, 5.

[15] See Intellectual Property, Nat’l J.’s Tech. Daily, June 19, 2005; Lora Volkert, Changes in Federal Patent Law Loom: Legislation May Generate Rush of Applications, Kan. City Daily Rec., Oct. 8, 2005; Sarah Lai Stirland, Intellectual Property: Patent Consensus Closer but Industry Divide Remains, Nat’l J.’s Tech. Daily, Sept. 15, 2005.

[16] KSR International v. Teleflex, 550 U.S. 398 (2007).

[17] eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 394 (2006).

[18] In re Volkswagen of America, Inc., 545 F.3d 304 (5th. Cir., 2008) (made transfer possible from EDTX).

[19] Uniloc USA, Inc. v. Microsoft Corp., 632 F. 3d 1292 (Fed. Cir. 2011).

[20] Pub. L. No. 112―29, 125 Stat. 284-341 (2011) (to be codified in scattered sections of 35 U.S.C).

[21] See Patent Reform Act of 2005, H.R. 2795, 109th Cong. § 3 (2005); see also 1 Roger M. Milgrim, Milgrim on Trade Secrets § 1.06 (2005). For instance, under Virginia’s implementation of the Uniform Trade Secrets Act,

a “[t]rade secret” means information, including but not limited to, a formula, pattern, compilation, program, device, method, technique, or process, that: 1. Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use.

Va. Code Ann. § 59.1-336 (2005).

[22] See 1 Milgrim, supra note 21, § 1.06.

[23] See Uniform Trade Secrets Act, § 1 (1985).  The Uniform Trade Secrets Act, model legislation, defines a trade secret to include “information . . . that: (i) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means . . . .”  Id.

[24] Also, the standard is relative to the state of reverse engineering technology at the time the application is filed, adding to the confusion of whether certain events, such as licenses, offers for sale, and in-house demonstrations under non-disclosure agreements, can become patent invalidating events.

[25] 486 F.3d 1376; 82 U.S.P.Q.2D 1801  (Fed. Cir. 2007).

[26] 424 F.3d 1374 (Fed. Cir. 2005).

[27] 359 F.2d 859 (CCPA 1966)

[28] 35 U.S.C. § 363 says PCT “designating the United States shall have the effect … of a national application for patent regularly filed in the Patent and Trademark Office”.

[29] MPEP 1857.01

[30] See generally MPEP 716.10 (discussing use of Declarations to show attribution) (8th Ed.  July 2010).

[31] E.g., Disclosure includes the act of disclosing, which is to “make known; reveal”.  The Oxford American Dictionary and Thesaurus, p.405 (Oxford University Press 2003).

[32] 35 U.S.C. §102(b)(2)(A).

[33] 35 U.S.C. §102(b)(2)(B).

[34] See generally MPEP 2336.05 (discussing uses of Declarations to show inventorship of subject matter in other applications) (8th Ed.  July 2010).

[35]  See MPEP 2136.05 for a more detailed discussion of In re Land, 368 F.2d 866 (CCPA 1966).


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