Under the America Invents Act, what qualifies as prior art is measured against a claimed invention’s effective filing date. 35 U.S.C. § 102(a)(1) encompasses inventions “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public” before that date, and § 102(a)(2) adds U.S. patents and published applications that name another inventor and were effectively filed earlier. With the AIA’s shift to first-inventor-to-file, an applicant can no longer “swear behind” a reference based on an earlier invention date, making the disclosures that precede the effective filing date decisive.
For printed publications, the touchstone is public accessibility. The Federal Circuit has found even limited, unrestricted distribution sufficient: a paper presented orally at a scientific conference and distributed without restriction to as few as six attendees was publicly accessible in Massachusetts Institute of Technology v. AB Fortia (Fed. Cir. 1985), as were printed slides displayed for days at industry events without confidentiality notices in In re Klopfenstein (Fed. Cir. 2004), which weighs the length of display, the target audience, expectations of confidentiality or non-copying, and the ease of copying. By contrast, absent evidence of actual dissemination or public accessibility before the critical date, as with the third-party clinical reference guide in C.R. Bard, Inc. v. AngioDynamics, Inc. (Fed. Cir. 2018), a document cannot satisfy the printed-publication standard.
A disqualifying public use is a use of the completed invention that is either accessible to the public or commercially exploited, while the on-sale bar under the two-pronged test in Pfaff v. Wells Electronics, Inc. (1998) requires a commercial offer for sale of an invention that is ready for patenting. In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. (2019), the Supreme Court confirmed that even a sale subject to confidentiality obligations triggers the bar where the existence of the sale is publicly known. Knowledge of the invention’s details is not required. Third-party clinical trials conducted under strict confidentiality agreements, however, were held not to be an invalidating public use in Dey, L.P. v. Sunovion Pharmaceuticals, Inc. (Fed. Cir. 2013), and a use or sale whose primary purpose is bona fide experimentation to perfect or test the claimed invention may avoid the bar altogether in Netscape Communs. Corp. v Konrad (Fed. Cir. 2002).
The statute’s exceptions remain narrow. Section 102(b)(1) provides a one-year grace period for disclosures made by the inventor or by another who obtained the subject matter from the inventor, but in Sanho Corp. v. Kaijet Technology International Ltd. (Fed. Cir. 2024), the Federal Circuit held that a private commercial sale is not a public disclosure capable of shielding a patent from intervening prior art. The inventor’s prior activity must itself be publicly accessible. Common ownership can likewise remove certain § 102(a)(2) references, and under § 102(c), subject matter developed under a qualifying joint research agreement is deemed commonly owned for that purpose.
Artificial intelligence is now testing these doctrines on several fronts. Platforms are using large language models to mass-generate synthetic technical disclosures aimed at preempting future patents; if published online and indexable, such content can literally satisfy the § 102(a)(1) printed-publication criteria, although hallucinated, non-enabling disclosures cannot anticipate and may be rebutted. Inventors’ own use of generative AI carries risk as well. Consumer-tier chatbots typically operate under terms of service permitting the vendor to store, review, and train on user inputs, and without an NDA or enterprise privacy controls, disclosing inventive details can destroy the expectation of confidentiality. The submission itself may be characterized as a public disclosure, starting the one-year U.S. grace period and potentially forfeiting rights in foreign jurisdictions that have none. Meanwhile, USPTO examiners are deploying AI semantic search tools that rapidly surface obscure global prior art, and practitioners using such tools in-house may need to submit references they uncover.
Author: Jayla Harvey
Edited by Craig Drachtman
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