Case: 16-1284 Document: 74 Page: 1 Filed: 04/27/2016
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`No. 2016-1284
`
`UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`HELSINN HEALTHCARE S.A., ROCHE PALO ALTO LLC,
`Plaintiffs-Appellees,
`
`v.
`
`TEVA PHARMACEUTICALS USA, INC., TEVA PHARMACEUTICAL
`INDUSTRIES, LTD.,
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`Defendants-Appellants.
`
`
`On Appeal from the United States District Court for the District of New Jersey, in
`Nos. 3:11-cv-03962-MLC-DEA, 3:11-cv-05579-MLC-DEA, 3:13-cv-05815-MLC-
`DEA, Judge Mary L. Cooper
`
`
`BRIEF OF AMICUS CURIAE THE NAPLES ROUNDTABLE, INC.
`IN SUPPORT OF PLAINTIFFS-APPELLEES
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`Andrew S. Baluch
`Larry L. Shatzer
`STRAIN PLLC
`1455 PENNSYLVANIA AVE., N.W.
`SUITE 400
`Washington, D.C. 20004
`(202) 621-1872
`
`Attorneys for Amicus Curiae the
`Naples Roundtable Inc.
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`
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`Helsinn Healthcare Exhibit 2091
`Dr. Reddy's Laboratories, Ltd., et al. v. Helsinn Healthcare S.A.
`Trial PGR2016-00008
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`Page 1 of 25
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`Case: 16-1284 Document: 74 Page: 2 Filed: 04/27/2016
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`CERTIFICATE OF INTEREST
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`Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., No. 16-1284
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`Counsel for amicus curiae the Naples Roundtable certify the following:
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`1.
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`2.
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`The full name of every party or amicus represented by us is:
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`The Naples Roundtable, Inc.
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`The names of the real party in interest represented by us is:
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`Not applicable.
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`All parent corporations and any publicly held companies that own 10
`3.
`percent or more of the stock of the party or amicus curiae represented by me are:
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`The Naples Roundtable has no parent corporation and no publicly
`traded company owns 10% of more of its stock.
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`The names of all law firms and the partners or associates that
`4.
`appeared for the party or amicus now represented by me in the trial court or
`agency or are expected to appear in this court are:
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`
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`STRAIN PLLC: Andrew S. Baluch, Larry L. Shatzer
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`Dated: April 27, 2016
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`/s/ Andrew S. Baluch
`Andrew S. Baluch
`Larry L. Shatzer
`STRAIN PLLC
`1455 PENNSYLVANIA AVE., N.W.
`SUITE 400
`Washington, D.C. 20004
`(202) 621-1872
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`Attorneys for Amicus Curiae the
`Naples Roundtable
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`Page 2 of 25
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`Case: 16-1284 Document: 74 Page: 3 Filed: 04/27/2016
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES ................................................................................... iii
`INTEREST OF AMICUS ......................................................................................... 1
`SUMMARY OF ARGUMENT ................................................................................ 1
`ARGUMENT ............................................................................................................ 3
`I.
`The District Court Properly Interpreted the Plain Language of the AIA ....... 3
`II.
`
`The “Sense of Congress” Provisions of the AIA Support the District
`Court’s Interpretation of the AIA ................................................................... 4
`A.
`
`Requiring Prior Art be Public is Consistent with the Intention
`that the AIA Achieve Harmonization of the U.S. Patent
`System with those Commonly in use Worldwide ................................ 6
`
`B.
`
`Requiring Prior Art be Public is Consistent with the Intention
`that the AIA Result in Greater Certainty Regarding the Scope
`of Patent Protection ............................................................................ 13
`CONCLUSION ....................................................................................................... 16
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`ii
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`Page 3 of 25
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`Case: 16-1284 Document: 74 Page: 4 Filed: 04/27/2016
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`
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`TABLE OF AUTHORITIES
`
`CASES
`Accardi v. Pennsylvania R.R., 383 U.S. 225 (1966) ................................................. 5
`
`Acetals/New Japan Chemical, Case T 1081/01 (E.P.O. Enlarged Bd. App. Sept. 27,
`2004) ...................................................................................................................... 8
`
`Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629 (Fed. Cir. 2011) .................. 3
`
`Finisar Corp. v. DirectTV Grp., Inc., 523 F.3d 1323 (Fed. Cir. 2008) .................... 3
`
`Hanson v. Espy, 8 F.3d 469 (7th Cir. 1993) ............................................................. 5
`
`Helsinn Healthcare S.A. v. Dr. Reddy's Labs., Ltd., No. 11-3962 (MLC), 2016 BL
`65089 (D.N.J. Mar. 03, 2016) ............................................................................... 3
`
`Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988)
` ............................................................................................................................. 16
`
`Mastro Plastics Corp. v. Labor Board, 350 U.S. 270 (1956) ................................... 4
`
`Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516
`(2d Cir. 1946) ............................................................................................... passim
`
`Richards v. United States, 369 U.S. 1 (1962) ........................................................... 4
`
`State Highway Comm’n of Mo. v. Volpe, 479 F.2d 1099 (8th Cir. 1973) ................. 5
`
`United States v. Ellis, 714 F.2d 953 (9th Cir. 1983) ................................................. 5
`
`
`STATUTES
`35 U.S.C. § 102 ......................................................................................................... 2
`
`Leahy-Smith America Invents Act of 2011, Pub. L. No. 112-29, 125 Stat. 284
`(2011) ................................................................................................................ 2, 6
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`iii
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`Page 4 of 25
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`

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`Case: 16-1284 Document: 74 Page: 5 Filed: 04/27/2016
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`RULES
`FED. R. APP. P. 29 ..................................................................................................... 1
`
`
`
`OTHER AUTHORITIES
`157 Cong. Rec. S1360 (daily ed. Mar. 8, 2011) (statement of Sen. Jon Kyl) .......... 3
`
`157 Cong. Rec. S5319 (daily ed. Sept. 6, 2011) (statement of Sen. Jon Kyl) ........ 14
`
`1A NORMAN SINGER & J.D. SHAMBIE SINGER, STATUTES AND STATUTORY
`CONSTRUCTION § 25:3 (7th ed. 2008) ................................................................... 4
`
`AM. BAR ASS’N SEC. OF INTELL. PROP. LAW, A SECTION WHITE PAPER: AGENDA
`FOR 21ST CENTURY PATENT REFORM (2005) ......................................................... 16
`
`AM. INTELLECTUAL PROP. ASS’N, SPECIAL COMMITTEE ON PATENT LEGISLATIVE
`PRIORITIES REPORT ON “FORFEITURE” BASED UPON INVENTIONS “IN PUBLIC USE
`OR ON SALE” (adopted on Jan. 25, 1992, revised on Sept. 12, 2003) ................. 15
`
`Dmitry Karshtedt, Did Learned Hand Get it Wrong? The Questionable Patent
`Forfeiture Rule of Metallizing Engineering, 57 Villanova L. Rev. 261 (2012) .. 13
`
`European Patent Convention art. 54, Oct. 5, 1973, 13 I.L.M 268 ............................ 7
`
`EUROPEAN PATENT OFFICE, GUIDELINES FOR EXAMINATION IN THE EPO PART G
`(2015) .................................................................................................................... 7
`
`JAPANESE PATENT OFFICE, EXAMINATION GUIDELINES FOR PATENT AND UTILITY
`MODEL IN JAPAN, Part III, ch. 2, § 3 (2015) (Japan) ........................................... 12
`
`KOREAN INTELLECTUAL PROPERTY OFFICE, PATENT EXAMINATION GUIDELINES
`(2013) (S. Kor.) ................................................................................................... 11
`
`Patent Act (Act No. 121 of April 13, 1959, as amended up to Act No. 36 of May
`14, 2014) (1959) (Japan) ..................................................................................... 12
`
`Patent Act (Act No. 950 as amended up to Act. No. 11,117) (2011) (S. Kor.) ...... 10
`
`Patent Law of the People’s Republic of China art. 22 (China) ................................. 9
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`iv
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`Page 5 of 25
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`Case: 16-1284 Document: 74 Page: 6 Filed: 04/27/2016
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`Robert A. Armitage, Understanding the America Invents Act and Its Implications
`for Patenting, 40 AIPLA Q.J. 1, 58 (2012) ........................................................... 4
`
`STATE INTELLECTUAL PROPERTY OFFICE OF THE PEOPLE’S REPUBLIC OF CHINA,
`GUIDELINES FOR PATENT EXAMINATION (2010) (China) ................................. 9, 10
`
`Toshiko Takenaka, Rethinking the United States First-To-Invent Principle from a
`Comparative Law Perspective: A Proposal to Restructure §102 Novelty and
`Priority Provisions, 39 Hous. L. Rev. 621 (2002) .............................................. 14
`
`WORLD INTELLECTUAL PROPERTY ORGANIZATION, WIPO IP Statistics Data Center,
`http://ipstats.wipo.int/ipstatv2/keyindex.htm ........................................................ 7
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`
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`v
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`Page 6 of 25
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`

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`Case: 16-1284 Document: 74 Page: 7 Filed: 04/27/2016
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`INTEREST OF AMICUS
`
`The Naples Roundtable, Inc. is a 501(c)(3) non-profit organization whose
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`primary mission is the exploration of ways to improve and strengthen the patent
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`system.1 To achieve this goal, the Naples Roundtable is engaged in the advanced
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`study of international intellectual property law and policy, in fostering the
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`exchange of ideas, viewpoints, and scholarly papers among leading jurists and
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`practitioners in the intellectual property field, and in organizing conferences and
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`other public events. More information about the Naples Roundtable can be found
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`at www.thenaplesroundtable.org. None of the Naples Roundtable, the individuals
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`on its Board of Directors, or its counsel have any personal interest in the outcome
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`of this case.2
`
`SUMMARY OF ARGUMENT
`
`The district court’s well-reasoned and detailed opinion that the Leahy-Smith
`
`America Invents Act (“AIA”) eliminated secret commercialization as prior art, thus
`
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`1 In accordance with Fed. R. App. P. 29 (c)(5), amicus curiae state that (A) no
`party’s counsel authored this brief in whole or in part, (B) no party or its counsel
`contributed money that was intended to fund preparing or submitting this brief, and
`(C) no person other than the amicus curiae, its members, or its counsel contributed
`money that was intended to fund preparing or submitting this brief. The parties
`have consented to the filing of this brief. See FED. R. APP. P. 29(a).
`2 Judges Richard Linn and Kathleen O’Malley are named as honorary members of
`the Naples Roundtable’s Advisory Committee, which is independent from its
`Amicus Committee and its Board. Judges Linn and O’Malley took no part in any
`discussion of this case or in the decision to file or preparation of this brief.
`
`1
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`Page 7 of 25
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`Case: 16-1284 Document: 74 Page: 8 Filed: 04/27/2016
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`statutorily overruling Metallizing Engineering Co. v. Kenyon Bearing & Auto
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`Parts Co., 153 F.2d 516 (2d Cir. 1946), should be affirmed. Indeed, the language
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`added to 35 U.S.C. § 102(a)(1) is plain and unambiguous in requiring prior art to
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`be “available to the public” and thus not secret. This change in the law is also
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`consistent with the overall objectives and policies behind passage of the AIA.
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`Congress made its intentions clear in two “sense of Congress” provisions it
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`included in the AIA. Those provisions expressly state that the objectives and
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`policies behind the first-inventor-to-file regime embodied in revised § 102 include
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`“harmonization of the United States patent system” with those commonly used
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`throughout the world, as well as achieving “greater certainty regarding the scope of
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`protection” provided by U.S. patents. See Leahy-Smith America Invents Act of
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`2011, Pub. L. No. 112-29, §§ 3(o)-(p), 125 Stat. 284, 293 (2011). First, because the
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`vast majority of patent applications filed outside the United States are filed in
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`jurisdictions where secret commercialization is not regarded as prior art, the
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`elimination of this category of prior art brings the U.S. patent system in line with
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`the rest of the world. Second, the AIA’s abrogation of Metallizing furthers
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`Congress’ goal of achieving greater certainty by making it easier to determine what
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`is or is not prior art without resorting to expensive discovery, and fits logically
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`within the policy framework of a first-inventor-to-file system.
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`2
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`Page 8 of 25
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`Case: 16-1284 Document: 74 Page: 9 Filed: 04/27/2016
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`ARGUMENT
`
`The District Court Properly Interpreted the Plain Language of the AIA
`
`The first inquiry in statutory interpretation “is to determine whether the
`
`
`
`I.
`
`
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`language at issue has a plain and unambiguous meaning with regard to the
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`particular dispute in the case. [This] inquiry must cease if the statutory language is
`
`unambiguous and the statutory scheme is coherent and consistent.” Bettcher Indus.,
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`Inc. v. Bunzl USA, Inc., 661 F.3d 629, 644 (Fed. Cir. 2011) (internal quotation and
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`citation omitted).
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`
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`In this case, the inquiry can and should end here. The district court opinion
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`contains a thorough and well-reasoned analysis of the new statutory language—“or
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`otherwise available to the public”—which aptly demonstrates why secret
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`commercialization no longer constitutes prior art. Helsinn Healthcare S.A. v. Dr.
`
`Reddy's Labs., Ltd., No. 11-3962 (MLC), 2016 BL 65089, at *44-45 (D.N.J. Mar.
`
`03, 2016). Indeed, the district court’s reliance on Finisar Corp. v. DirectTV Grp.,
`
`Inc., 523 F.3d 1323 (Fed. Cir. 2008), for the proposition that “[w]hen a modifier is
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`set off from a series of antecedents by a comma, the modifier should be read to
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`apply to each of those antecedents,” id. at 1336, finds direct support for its
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`application to the precise AIA language at issue, in both the legislative history as
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`well as from an industry leader directly involved in the drafting of the statute. See
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`157 Cong. Rec. S1360, 1370 (daily ed. Mar. 8, 2011) (statement of Sen. Jon Kyl)
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`3
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`Page 9 of 25
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`Case: 16-1284 Document: 74 Page: 10 Filed: 04/27/2016
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`(expressly noting application of Finisar to the very phrase in § 102(a)(1) at issue);
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`see also, Robert A. Armitage, Understanding the America Invents Act and Its
`
`Implications for Patenting, 40 AIPLA Q.J. 1, 58 (2012) (explaining same).
`
`II. The “Sense of Congress” Provisions of the AIA Support the District
`
`Court’s Interpretation of the AIA
`
`Should this Court, however, deem it necessary to inquire beyond the plain
`
`
`
`language of § 102(a)(1), the clearly expressed objectives and policies behind the
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`AIA, found within the statute itself, further support the district court’s conclusion.
`
`
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`In Richards v. United States, the Supreme Court stated a basic canon of
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`statutory construction:
`
`We believe it fundamental that a section of a statute
`should not be read in isolation from the context of the
`whole Act, and that in fulfilling our responsibility in
`interpreting legislation, “we must not be guided by a
`single sentence or member of that sentence, but [should]
`look to the provisions of the whole law, and to its object
`and policy.”
`
`369 U.S. 1, 11 (1962) (quoting Mastro Plastics Corp. v. Labor Board, 350 U.S.
`
`270, 285 (1956)). See also 1A NORMAN SINGER & J.D. SHAMBIE SINGER, STATUTES
`
`AND STATUTORY CONSTRUCTION § 25:3 (7th ed. 2008) (“The statute should be
`
`construed according to its subject matter and the purpose for which it was
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`enacted.”).
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`Sometimes the object and policy behind a statute are readily discernible
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`because they are expressly stated in provisions indicating the “sense of Congress.”
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`4
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`Page 10 of 25
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`Case: 16-1284 Document: 74 Page: 11 Filed: 04/27/2016
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`In such instances, courts have found while “[such] language is precatory and
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`merely reflects a policy statement, nevertheless, such language can be useful in
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`resolving ambiguities in statutory construction.” State Highway Comm’n of Mo. v.
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`Volpe, 479 F.2d 1099, 1116 (8th Cir. 1973). Indeed, there are numerous examples
`
`of courts, including the Supreme Court, expressly relying upon “sense of
`
`Congress” statements in legislation when determining the meaning of statutory
`
`provisions. See, e.g., Accardi v. Pennsylvania R.R., 383 U.S. 225, 229 (1966)
`
`(Selective Training and Service Act of 1940); Hanson v. Espy, 8 F.3d 469, 476
`
`(7th Cir. 1993) (Disaster Assistance Act of 1988); United States v. Ellis, 714 F.2d
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`953, 955-56 (9th Cir. 1983) (Consolidated Farm and Rural Development Act of
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`1961).
`
`
`
`The AIA contains two express statements of the “sense of Congress” directly
`
`pertinent to the issue in this case:
`
`(o) SENSE OF CONGRESS.—It is the sense of the Congress
`that converting the United States patent system from
`“first to invent” to a system of “first inventor to file” will
`promote the progress of science and the useful arts by
`securing for limited times to inventors the exclusive
`rights to their discoveries and provide inventors with
`greater certainty regarding the scope of protection
`provided by the grant of exclusive rights to their
`discoveries.
`
`(p) SENSE OF CONGRESS.—It is the sense of the Congress
`that converting the United States patent system from
`“first to invent” to a system of “first inventor to file” will
`improve the United States patent system and promote
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`5
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`Page 11 of 25
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`Case: 16-1284 Document: 74 Page: 12 Filed: 04/27/2016
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`harmonization of the United States patent system with
`the patent systems commonly used in nearly all other
`countries throughout the world with whom the United
`States conducts trade and thereby promote greater
`international uniformity and certainty in the procedures
`used for securing the exclusive rights of inventors to their
`discoveries.
`
`
`Leahy-Smith America Invents Act §§ 3(o)-(p).
`
`
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`As explained below, both of these provisions support the district court’s
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`interpretation.
`
`A. Requiring Prior Art be Public is Consistent with the Intention
`
`that the AIA Achieve Harmonization of the U.S. Patent
`
`
`System with those Commonly in use Worldwide
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`It is beyond question that interpreting the AIA to require that prior art be
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`public is consistent with Congress’s stated goal, set forth in AIA § 3(p), of
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`harmonizing the U.S. patent system with those commonly used worldwide. Indeed,
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`as explained below, the four other members of the IP5 Offices (“IP5”),3 which
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`receive and examine the vast majority of all patent applications filed throughout
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`the world,4 all require that commercialization of an invention be public in order to
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`3
`IP5 Offices, www.fiveipoffices.org (China, European Patent Office, Japan,
`Republic of Korea, and the United States).
`4
`According to the World Intellectual Property Organization, 2,680,990 patent
`applications were filed worldwide in 2014. Of those, 2,195,922 patent applications
`were filed, either directly or as national stage entries of the PCT, in the national
`filing office of the IP5. Therefore, the IP5 received 81.9% of all patent applications
`filed in 2014. The United States accounted for 26.4% of the IP5 applications
`
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`6
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`Case: 16-1284 Document: 74 Page: 13 Filed: 04/27/2016
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`qualify as prior art.
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`Europe
`
`Article 54(2)
`The state of the art shall be held to comprise everything made
`available to the public by means of a written or oral description, by
`use, or in any other way, before the date of filing of the European
`patent application.
`
`
`European Patent Convention art. 54, Oct. 5, 1973, 13 I.L.M 268 (available at
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`https://www.epo.org/law-practice/legal-texts/html/epc/2013/e/ar54.html).
`
`7.2.2 Agreement on secrecy
`The basic principle to be adopted is that subject-matter has not
`been made available to the public by use or in any other way if there
`is an express or tacit agreement on secrecy which has not been
`broken, or if the circumstances of the case are such that such secrecy
`derives from a relationship of good faith or trust. Good faith and trust
`are factors which may occur
`in contractual or commercial
`relationships. Reference should be made to the particular case of a
`non-prejudicial disclosure arising from an evident abuse in relation to
`the applicant, in accordance with Art. 55(1)(a) (see below, G-IV,
`7.3.2; G-V).
`
`
`EUROPEAN PATENT OFFICE, GUIDELINES FOR EXAMINATION IN THE EPO PART G
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`IV-9 (2015) (available at https://www.epo.org/law-practice/legal-texts/guidelines.
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`html).
`
`What can be considered as part of the state of the art is laid down in
`Article 54(2) EPC as everything made available to the public by
`means of a written or oral description, by use or in any other way,
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`received, and represented 21.6% of all applications filed globally. See WORLD
`INTELLECTUAL PROPERTY ORGANIZATION, WIPO IP Statistics Data Center,
`http://ipstats.wipo.int/ipstatv2/keyindex.htm (last visited April 22, 2016).
`
`7
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`Case: 16-1284 Document: 74 Page: 14 Filed: 04/27/2016
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`
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`before the date of filing of the European patent application. The case
`law (see Case Law of the Boards of Appeal of the European Patent
`Office, 4th edition 2001 Section I.C.1.6.6) accepts that information is
`"available to the public" if only a single member of the public is in a
`position to gain access to it and understand it, and if there is no
`obligation to maintain secrecy. However in every such case (see also
`T 932/96 of 16 June 1998 points 2.4.4.4 and 2.4.4.5, or T 11/99 of 10
`October 2000 points 1.2.1 and 1.2.2) the information was made
`available to one or more persons who at the time of the information
`being made available could be described as a member or members of
`the public.
`
`
`Acetals/New Japan Chemical, Case T 1081/01, slip. op. at ¶ 5 (E.P.O. Enlarged
`
`Bd. App. Sept. 27, 2004) (available at: http://www.epo.org/law-practice/case-law-
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`appeals/pdf/t011081eu1.pdf).
`
`China
`
`
`Article 22
`22.1 Inventions and utility models for which patent rights are to
`be granted shall be ones which are novel, creative and of practical use.
`22.2 Novelty means that the invention or utility model
`concerned is not an existing technology; no patent application is filed
`by any unit or individual for any identical invention or utility model
`with the patent administration department under the State Council
`before the date of application for patent right, and no identical
`invention or utility model is recorded in the patent application
`documents or the patent documentations which are published or
`announced after the date of application.
`22.3 Creativity means that, compared with the existing
`technologies, the invention possesses prominent substantive features
`and indicates remarkable advancements, and the utility model
`possesses substantive features and indicates advancements.
`22.4 Practical use means that the said invention or utility model
`can be used for production or be utilized, and may produce positive
`results.
`22.5 For the purposes of this Law, existing technologies mean
`the technologies known to the public both domestically and abroad
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`8
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`Case: 16-1284 Document: 74 Page: 15 Filed: 04/27/2016
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`before the date of application.
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`Patent Law of the People’s Republic of China art. 22 (China) (available at
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`http://english.sipo.gov.cn/laws/lawsregulations/201101/t20110119_566244.html).
`
`2.1 Prior Art
`According to Article 22.5, the prior art means any technology
`known to the public before the date of filing in China or abroad. The
`prior art includes any technology which has been disclosed in
`publications in China or abroad, or has been publicly used or made
`known to the public by any other means in China or abroad, before the
`date of filing) or the priority date where priority is claimed).
`The prior art shall be the technical contents that are available to
`the public before the date of filing. In other words, the prior art shall
`be in such a state that it is available to the public before the date of
`filing and shall contain such contents from which the public can
`obtain substantial technical knowledge.
`It should be noted that technical contents in the state of secrecy
`are not part of the prior art. The state of secrecy includes not only the
`situation where the obligation to keep secret arises from regulations or
`agreements regarding confidences but also the situation where the
`obligation to keep secret arises from social customs or commercial
`practices, that is, from implicit agreements or understandings.
`However, if a person having the obligation to keep secret
`breaches
`the regulation, agreement, or
`implicit understanding,
`rendering
`the
`technical contents disclosed and making
`the
`technologies available to the public, these technologies shall form part
`of the prior art.
`
`
`STATE INTELLECTUAL PROPERTY OFFICE OF THE PEOPLE’S REPUBLIC OF CHINA,
`
`GUIDELINES FOR PATENT EXAMINATION 171-72 (2010) (China) (available at
`
`http://www.sipo.gov.cn/zlsqzn/sczn2010eng.pdf).
`
`2.1.2.2 Disclosure by Use
`Disclosure by use means that by use the technical solution is
`disclosed or placed in the state of being available to the public.
`Means of disclosure by use include making, using, selling,
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`importing, exchanging, presenting, demonstrating, exhibiting and the
`like that can make the technical content available to the public. So
`long as by the above means the relevant technical content is placed in
`such a state that the public can know it if they wish, disclosure by use
`can be established, and it is of no relevance whether the public had
`actually known it. However, of at an exhibition or demonstration of a
`product no explanation of the technical contents thereof is provided so
`that the structure and function or compositions of the product is not
`known to person skilled in the art, the exhibition or demonstration
`does not constitute a disclosure by use.
`Where disclosure by use is concerned with a product, it can be
`established even if the product or device used needs to be destroyed to
`get its structure and function known. Moreover, disclosure by use also
`includes disclosure on an exhibition stand or in a shop window of
`informative materials that are readable by the public or directly visible
`materials, such as posters, drawings, photographs, specimens, and
`samples.
`The date on which the product or process is available to the
`public shall be regarded as the date of disclosure by use.
`
`
`Id. at 173.
`
`Korea
`
`Article 29 (Requirements for Patent Registration)
`(1) Inventions having industrial applicability may be patentable unless they fall
`under any of the following paragraphs:
`1. Inventions publicly known or worked in the Republic of Korea or in a
`foreign country prior to the filing of the patent application;
`2. Inventions described in a publication distributed in the Republic of
`Korea or in a foreign country prior to the filing of the patent
`application or inventions made accessible to the public through
`telecommunication lines prescribed by Presidential Decree.
`
`
`Patent Act (Act No. 950 as amended up to Act. No. 11,117), art. 29(1)
`
`(2011) (S. Kor.) (available at http://www.wipo.int/wipolex/en/text.jsp?
`
`file_id=281593).
`
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`3.1 Publicly Known Invention
`A “publicly known” invention means an invention the contents
`of which have been known to an unspecified person without
`obligation of secrecy in the Republic of Korea or a foreign country
`prior to the filing of the application. The time of filing in the “prior to
`the filing of the application” refers to the exact point of time of filing,
`even to the hour and minute of the filing (if the invention is publicly
`known, the time is converted into Korean time). It does not mean the
`concept of the date of filling. “Unspecified persons” refers to the
`general public who does need to abide by secret observance duty.
`
`3.2 Publicly Worked Invention
`A “publicly worked” invention means an invention which has
`been worked under the conditions where the contents of the invention
`are to be publicly known or can potentially be publicly known in the
`Republic of Korea or a foreign country (Definition of "working"
`refers to the Patent Act Article 2). Also, “being public” means a
`situation where it is no longer kept in secret. So, even when a small
`fraction of inner part of an invention is kept in secret with regard to
`working of the invention, it shall not be considered as a publicly
`worked invention.
`
`
`
`
`
`
`KOREAN INTELLECTUAL PROPERTY OFFICE, PATENT EXAMINATION GUIDELINES
`
`208-09 (2013) (S. Kor.) (available at http://www.kipo.go.kr/upload/en/download/
`
`patent_examination_guidelines_2013_07.pdf).
`
`Japan
`
`
`Article 29(1)
`An inventor of an invention that is industrially applicable may
`be entitled to obtain a patent for the said invention, except for the
`following cases:
`(i) inventions that were publicly known in Japan or a foreign
`country prior to the filing of the patent application;
`(ii) inventions that were publicly worked in Japan or a foreign
`country prior to the filing of the patent application; or
`(iii) inventions that were described in a distributed publication,
`
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`or inventions that were made publicly available through an electric
`telecommunication line in Japan or a foreign country prior to the
`filing of the patent application.
`
`
`Patent Act (Act No. 121 of April 13, 1959, as amended up to Act No. 36 of May
`
`14, 2014), art. 29(1)
`
`(1959)
`
`(Japan)
`
`(available at http://www.wipo.int/
`
`edocs/lexdocs/laws/en/jp/jp198en.pdf).
`
`3.1.3 Publicly known prior art (Article 29(1)(i))
`‘Publicly known prior art’ means prior art which has become
`known to anyone as an art without an obligation of secrecy (Note).
`(Note) Prior art disclosed by a person on whom obligation of
`secrecy is imposed to another person who are not aware of its secrecy
`is ‘publicly known prior art’ irrespective of the inventor’s or
`applicant’s intent to keep it secret. Generally, an article of academic
`journal would not be put in public view even if it was just received.
`Therefore, prior art described in the article is not ‘publicly known
`prior art’ until the article is published.
`‘Publicly known prior art’ often become known in lecture,
`briefing session and so on generally. In this case, the examiner
`specifies the prior art on the basis of the matters explained in the
`lecture, briefing session and so on. In interpreting the explained
`matters, the examiner may use the matters derived by a person skilled
`in the art as a base for specifying ‘publicly known prior art’ by
`considering the common general knowledge at the time of the lecture,
`briefing session and so on.
`
`
`JAPANESE PATENT OFFICE, EXAMINATION GUIDELINES FOR PATENT AND UTILITY
`
`MODEL IN JAPAN, Part III, ch. 2, § 3, at 6 (2015) (Japan) (available at:
`
`https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/files_guidelines_e/03_0203_e.pdf).
`
`Interpreting the AIA to retain the secret prior art regime of Metallizing, as
`
`appellants urge in this case, would frustrate Congress’s stated objective of
`
`promoting international harmonization and would impede the USPTO’s ability to
`
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`efficiently examine applications through collaborative “work-sharing” initiatives
`
`among all the other IP5 offices.
`B. Requiring Prior Art be Public is Consistent with the Intention
`that the AIA Result in Greater Certainty Regarding the Scope of
`Patent Protection
`
`
`
`The AIA’s abrogation of Metallizing will also result in simplification in
`
`determining what is and is not prior art, thereby furthering Congress’s stated
`
`objective, set forth in AIA § 3(o), of creating greater certainty in the patent system.
`
`
`
`First, Metallizing was problematic on several levels and was by no means
`
`the well-crafted cornerstone of the patent system some try to make it out to be. As
`
`one scholar summarized at the conclusion of a comprehensive review of the case:
`
`The patent forfeiture rule of Metallizing is unsupported
`by precedent or statute, and is inequitable on the actual
`facts of the case. . . . The disclosure and extension of
`monopoly rationales for th