Can Prior Art be Manufactured After a Patent Application Has Been Filed?

Stoel Rives attorney Jeffrey Woodworth discussed in The Enterprise the impact of changes to what constitutes prior art by the Leahy-Smith America Invents Act (AIA). In the article, Woodworth suggests the changes may allow a patent applicant’s competitors to manufacture prior art after the filing of a patent application. Under pre-AIA law, a later filed competitor’s application could be prior art if it claimed priority to an earlier application. However, to do so, the earlier application had to demonstrate that the earlier inventors possessed the invention (the written description requirement) and the earlier application had to describe how to make the invention without undue experimentation (the enablement requirement). If either requirement was not satisfied, the later filed application would not be recognized as prior art. However, under the new AIA, the subject matter is only required to be described. No court has interpreted this law yet, but some commentators have suggested this new change eliminates the previous enablement requirement. If true, companies would be able to disrupt or block their competitors’ patent applications.

Woodworth offers several precautions applicants can take to protect themselves from later manufactured prior art, including: Filing applications early and often to make it harder for a competitor to find applications that can be used to predate their work, filing additional applications whenever changes or improvements are made to the invention, filing applications well before going public with your invention and keeping documentation of the R&D process and lab notebooks to help prove derivation. These steps should prevent patent applicants from encountering later manufactured prior art and reduce the cost of overcoming it when it is encountered.

"Can Prior Art Be Manufactured After a Patent Application Has Been Filed?" was published by The Enterprise on April 14, 2014.