On the Early Attempts for the EU’s Unitary Patent System- What the Past Teaches us About the Future -

Does 'Public Use' Mean the Same Thing It Did Last Year?

10.31235/osf.io/xcebj ◽

2016 ◽

Cited By ~ 2

Author(s):

Mark Lemley

Keyword(s):

Common Law ◽

Radical Change ◽

Patent System ◽

The Past ◽

Prior Art ◽

The Future

In 2011, Congress enacted the America Invents Act (AIA), the mostsubstantial overhaul of the patent system in the past sixty years. The mostsignificant change in the AIA was the move from a first to invent regime toa first inventor to file regime. The goal of the move to first to file,besides harmonization, is to encourage inventors to move with alacrity toshare their invention with the world.There is an ambiguity in the AIA, however, that threatens that disclosureobjective. Some commentators have argued that Congress intended tofundamentally change the rules of prior art in a way that would encouragesecrecy rather than disclosure. Under this interpretation of the new law,an inventor can use its process in secret for commercial purposes,potentially forever, and still file a patent on that invention at somepoint in the future. Far from encouraging disclosure, on thisinterpretation the effect of the AIA is to encourage secrecy and delay inpatenting. Curiously, the argument is that Congress signaled its intent tomake this fairly radical change by re-enacting language that had been inthe Patent Act for the last 140 years: the words "public use."Because two of these commentators, Bob Armitage and Joe Matal, wereinvolved in the drafting of the AIA, this argument has carried substantialweight, and the PTO in 2013 adopted regulations that read the term "publicuse" in the AIA as meaning something completely different than it had forthe century before 2011.In this paper, I make two points. First, as a matter of statutoryinterpretation it is unlikely that Congress intended to make such a change,not only because they readopted existing statutory language but becauseother parts of the statute make no sense under such an interpretation.Second, reading the AIA as making such a change would be unwise as a policymatter, not only because it would encourage secrecy but because it wouldundermine confidence that other terms reenacted in the AIA have the samemeaning they have accrued in decades of common law.

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