A decision from the Federal Circuit published August 12, 2024 (Celanese Int’l Corp. v. ITC, Appeal No. 2022-1827) definitively answers a question pondered by many since the America Invents Act (AIA) came into being more than a decade ago: does selling a product made by a secret process more than a year before filing a patent application render claims to that process unpatentable under the “on-sale bar?” 

History and the Decision

Celanese obtained a patent for a process of making an artificial sweetener known as “Ace-K” and filed a petition before the International Trade Commission (ITC) to prevent several other entities from importing Ace-K made using the patented process without permission. The accused infringers sought to have the claims invalidated because more than a year before filing, Celanese had sold Ace-K made using the patented process, which Celanese admittedly was performing in secret at the time.

Pre-AIA precedent said no patent. But when the AIA revised the relevant law, there was speculation that these earlier cases might have been overturned by Congress. Of course, the legislation provided little guidance. A major hook for those contending the law had changed was the addition of a single word. The previous statute precluded a patent if “the invention was…on sale.” The AIA changed that to “the claimed invention was…on sale.”  If the “claimed invention” is a process, as Celanese argued in this case, the sale of a product should not preclude the process’ patentability. 

This position took a hit with the Supreme Court’s 2019 decision in Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., 586 U.S. 123. The Court there held that Congress’ re-use of the “on sale” language from the previous statute signaled an adoption of all the prior judicial precedent construing that phrase. Helsinn addressed a different issue where the on-sale bar applied to a product’s sale to a third party even though the purchaser was required to keep the invention confidential. 

In Celanese, the Federal Circuit relied heavily on the Supreme Court’s Helsinn rationale to reach the same conclusion – pre-AIA precedent still applied when considering claims to a process where a product made by that process had been sold more than a year before filing.  The addition of “claimed” in the statute was unavailing because the pertinent pre-AIA cases themselves interchangeably referred to “the invention” and “the claimed invention.” So despite 10+ years of speculation, the new law is the same as the old law when it comes to patenting a process. 

How Does This Affect Me?

Hopefully, it won’t. The Court’s ruling effectively maintains the status quo from pre-AIA times. But it is a good refresher for actions you should take when new processes are developed.  Methods can have two alternatives for protection: patents or trade secrets. As long as the method cannot be determined from examining a product made thereby, trade secret protection can be a viable option. Trade secrets potentially last longer than a patent, but carry some other risks, some of which can be out of your control. 

Celanese reinforces that you cannot protect the process as a trade secret while selling resulting products and then, years later, decide to switch gears and file a patent application on that same process.  A decision must be made early on about how to protect the new method.  If you need time, one strategy is to file a provisional patent application. That way, you can inexpensively secure a filing date that will come in handy if you ultimately wish to pursue patent protection. If you decide trade secret is the better route, the provisional patent application can be allowed to lapse. If a provisional patent application is not converted to a nonprovisional patent application within a year from filing, it does not become public. It’s as if nothing was ever filed. 

For assistance with planning to protect your valuable processes, contact the experienced patent attorneys at Panitch Schwarze.