Ben Smith is a patent attorney at Suiter Swantz IP. He received his B.S. in Mechanical Engineering from the University of Nebraska Lincoln and his Juris Doctor with distinction from the University of Nebraska College of Law. Ben is admitted to the Nebraska Supreme Court and the U.S. District Court, District of Nebraska. He is also registered to practice before the United States Patent and Trademark Office.


Judicial constructions of “public use” prior to the America Invents Act (AIA) likely apply to “public use” under 35 U.S.C. § 102(a)(1), in light of Helsinn v. Teva (2019).

In 2019, the Supreme Court found that judicial constructions of “on sale” under § 102(b) (pre-AIA) apply to the “on sale” bar to patentability under the AIA. One outstanding issue is whether existing pre-AIA judicial constructions also apply to the “public use” bar on patentability found in § 102(a)(1). Although not explicitly stated by the Supreme Court, the analysis for the “on sale” bar would be substantially analogous to the “public use” bar. Thus, pre-AIA judicial constructions of “on sale” would likely be found to apply to § 102(a)(1).

Prior to 2013, the United States included a public use bar to patentability in 35 U.S.C. 102(b) (pre‑AIA) which provided that “a person shall be entitled to a patent unless … (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States”.

In 2013, the Leahy-Smith America Invents Act amended 35 U.S.C. § 102(a)(1) to provide that “a person shall be entitled to a patent unless (1) 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”. The addition of the phrase “or otherwise available to the public” raised an outstanding issue as to whether Congress intended to alter the meaning of “on sale” and/or “in public use”.

In Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., the Supreme Court applied a presumption that when Congress reenacted the same “on sale” language in the AIA, it adopted the earlier judicial construction of that phrase. The Supreme Court then found that the addition of the catchall phrase “or otherwise available to the public” in the AIA did not alter the meaning of “on sale”, such that pre-AIA judicial constructions apply. See Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., 139 S. Ct. 628, 630, 202 L. Ed. 2d 551 (2019). Notably, the opinion of the Supreme Court was unanimous.

The Supreme Court did not specifically address whether the addition of the catchall phrase “or otherwise available to the public” in the AIA altered the meaning of “public use” in Helsinn. However, the court’s rational regarding congressional intent of the term “on sale” would be substantially similar for the term “public use”. A court would likely presume that when Congress reenacted the same “public use” language in the AIA, it adopted the earlier judicial construction. The burden would then be placed on the party attempting to rebut the presumption.

The USPTO, patent prosecutors, litigants, and lower courts would be reasonable to follow well-settled pre-AIA precedent regarding the meaning of “public use” for patents and patent applications subject to the American Invents Act for the reasons set forth above. For example, the USPTO currently treats the public use provision of AIA 35 U.S.C. 102(a)(1) with the same substantive scope, with respect to uses by either the inventor or a third party, as public uses under pre-AIA 35 U.S.C. 102(b) by unrelated third parties or others under pre-AIA 35 U.S.C. 102(a). See MPEP 2152.02(c).

The views and opinions expressed in this paper are solely those of the author in his private capacity and do not represent those of Suiter Swantz pc llo. This article is provided for information purposes and is not intended to provide substantive legal advice. Further information may be found by contacting legal counsel.


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