This article was reprinted with permission from Law360.
Petitioners in post-grant review and covered business method proceedings under the America Invents Act can present challenges to patentability based on “on-sale” prior art. This is not the case in inter partes review proceedings, which are limited to challenges based on patents and printed publications.[1] Thus, PGRs and CBMs provide petitioners with a greater array of prior art to develop patentability challenges.
Under pre-AIA law, the on-sale bar can be triggered by both public and private sales and offers for sale.[2] Under the AIA, a person is entitled to a patent unless “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.”[3] The new statute raises the question of whether the scope of the on-sale bar has changed under the AIA. The Federal Circuit has yet to construe the AIA’s on-sale bar provisions. However, recent PTAB decisions offer guidance on this issue.
Click here to read the recent decisions and view the full Law360 article.