The main provisions of the Leahy-Smith America Invents Act
(AIA) will go into effect on March 16, 2013. Among these, 35 U.S.C.
§ 102(f), which provided a defense to patent infringement based on lack of
inventorship, will be repealed. This section provided that a person is not
entitled to a patent if “he did not himself invent the subject matter sought to
be patented.”
However, 35 U.S.C. § 101 will to some extent, at least,
fill that gap. Thus, the repeal of § 102(f) will require those seeking to
invalidate a patent or prevent a patent from being granted to fall back on
§ 101. This raises this question of how “lack of inventorship” under
§ 101 will be treated the same and how it will be treated different from
§ 102(f). For example, will it now be treated more similarly to the
subject-matter eligibility requirement that coexists in § 101?
First, some review.
Although sometimes overlooked, § 101 actually provides the basis for four
requirements to obtain a patent: (i) inventorship, (ii) patent-eligible subject
matter, (iii) utility, and (iv) absence of double-patenting on an anticipation
rationale. As Joe Matal discussed in his excellent Guide to the Legislative History of the America Invents Act,
the legislative histories of both the 1952 Patent Act and the AIA include
commentary that § 101 requires the named inventor to have actually
invented the subject matter that he seeks to patent.
Meanwhile, defenses that may be asserted in any patent
infringement action are enumerated in 35 U.S.C. § 282. In the new
Post-Grant Review established by the AIA, review is explicitly limited to the
grounds for invalidation specified in § 282. In relevant part, § 282
states that an accused infringer may assert “[i]nvalidity of the patent or any
claim in suit on any ground specified in part II of this title as a condition for patentability” (emphasis
added).
Professor David Hricik,
interestingly, has made the case that the defenses available under § 282(b)
may not include the patent-eligible subject matter requirement as “a condition
for patentability.” Professor Hricik also appears to believe that § 282 is
the exclusive source of defenses to
infringement in district court litigation, just as in the new Post-Grant Review
and Inter Partes Review. If Professor
Hricik is correct, then courts have been wrongly assuming that a patent can properly
be invalidated on subject-matter-eligibility grounds during litigation.
Since Professor Hricik’s based his conclusion that
subject-matter eligibility falls outside of the ambit of § 282(b) on the
wording of §§ 282 and 101 generally, then § 282(b) should similarly
be interpreted to leave out the lack-of-inventorship defense. If so, lack of
inventorship does not provide a basis for invalidity in Post-Grant Review and
probably also does not provide a defense to infringement during litigation. (Inter Partes Review, meanwhile, is
limited even more narrowly to §§ 102 and 103.)
Similarly, statutory double-patenting and the other
requirements of § 101 would also not provide a defense to infringement
during litigation. This would turn out to be very strange since, e.g., courts
have frequently recognized judicially-created obviousness-type double patenting
as a defense to infringement during litigation.
Two observations in
conclusion. First, assuming that Professor Hricik is correct, at what stage
could inventorship actually be challenged? The USPTO’s implementation of the AIA’s
Third-Party Submissions provision permits persons to submit, before issuance of
a patent, “patents, published patent applications, or other printed
publications of potential relevance to examination.” However, given the facts
that lack-of-inventorship evidence often does not take the form of a printed
publication and that patents are often not published before issuance, in the
vast majority of cases this will not be a useful way to challenge a patent
before issuance.
Second, the Supreme Court stated in Bilski v. Kappos, 130 S. Ct. 3218 (2010), that the subject-matter
eligibility requirement of § 101 presents a “threshold test.” 130 S. Ct. at
3225. Certain judges on the Federal Circuit appear to interpret this
“threshold” language as imposing some kind of procedural framework. For
example, Judge Mayer wrote in his dissent in Myspace, Inc. v. GraphOn Corp., 672 F.3d 1250 (Fed. Cir. 2012):
The issue of whether a claimed method
meets the subject matter eligibility requirements contained in 35 U.S.C. § 101
is an “antecedent question” that must be addressed before this court can
consider whether particular claims are invalid as obvious or anticipated. In re Comiskey, 554 F.3d 967, 975 n.7
(Fed. Cir. 2009). . . . This court must first
resolve the issue of whether the GraphOn patents are directed to an
unpatentable “abstract idea” before proceeding to consider subordinate issues
related to obviousness and anticipation.
672 at 1264 (emphasis added). This point specifically, and
the topic generally, have been discussed at the Patently-O Blog.
Given the Supreme Court’s basis in Bilski for stating that
subject-matter eligibility is “threshold test," which appears to be the language of § 101
and its location in the Patent Act, there is no obvious reason why the other
three requirements of § 101 also should not be considered to be of a procedurally
“threshold” nature. Thus, with the repeal of § 102(f) we may come to find
inventorship also being explicitly treated as a “threshold test” that must be
resolved before “subordinate issues” such as obviousness and anticipation.
