"The Federal Circuit's recent decision in Merck Serono S.A. v. Hopewell Pharma Ventures, Inc. provides important clarification on when a patent reference qualifies as prior art "by another" under pre-AIA law 35 U.S.C. § 102(e). It also highlights ways that the AIA has subtly changed this category of "secret springing prior art" that is now codified under § 102(a)(2) and the special exceptions found in § 102(b)(2) and §102(c)."
"The case comes as we also have a pending Supreme Court petition in Lynk Labs challenging whether this secret prior art qualifies as a "printed publication" that can serve as the foundation for an inter partes review (IPR) challenge. That petition is set for consideration by the Court later this week."
Federal Circuit clarified criteria for when a patent reference qualifies as prior art "by another" under pre‑AIA 35 U.S.C. §102(e). The clarification delineates when earlier-filed patents or patent applications are attributable to another party for prior art purposes. The America Invents Act codified similar secret springing prior art under §102(a)(2) while creating distinct exceptions in §§102(b)(2) and 102(c), which change how that category operates. A pending Supreme Court petition in Lynk Labs challenges whether such secret prior art can qualify as a "printed publication" for initiating an inter partes review, potentially affecting IPR availability.
Read at Patently-O
Unable to calculate read time
Collection
[
|
...
]