“And miles to go before I sleep, And miles to go before I sleep.”

That’s a little bit what starting this adventure in blogging feels like. It is also the ending to Robert Frost’s poem “Stopping by Woods on a Snowy Evening.” On January 1, 2019, most copyrighted works published in 1923 went into the public domain. This includes several notable works including “Stopping by Woods on a Snowy Evening,” a dubstep version of “Yes, We Have No Bananas,” and Winston Churchill’s The World Crisis. The practical effect of this is that everyone can now republish worry free those works or adapt them for use in new works. A quick internet search will reveal most of the works that have now entered the public domain.

Why has it been a whopping 21 years since such a large number of works have entered into the public domain? In 1998, works published in 1922 or earlier were in the public domain. In that same year, Congress passed the Sonny Bono Copyright Term Extension Act that increased the duration of copyright protection for works published between 1923 and 1977 from 75 years to 95 years. The practical effect of the law was that the flow of works into the public domain completely stopped for a 21-year period.

How did the public domain get frozen in time for 21 years? One of the prime movers for the passage of the Act was Disney because the first appearance of Mickey Mouse, in the movie Steamboat Willie, occurred in 1928. Under the copyright laws in 1998, that version of Mickey Mouse would have entered into the public domain in 2004. After passage of the Act, this version of the Mouse is still protected until 2024.

A very nice source of information on copyright term and the Public Domain can be found here at Cornell University Library’s Copyright Information Center.

Did the America Invents Act (AIA) change the Patent On-sale bar?

The U.S Supreme Court heard oral arguments last month regarding whether the America Invents Act changed the definition of the on-sale bar for patents. Before the AIA, the on-sale bar meant that an applicant for a patent could not have sold or attempted to sell the claimed invention before the filing of a patent application. In most situations, however, there was 1-year grace period from the sale or attempted sale date for an applicant to file the patent application so that sale would not be considered prior art. Any patent application covering that invention that was filed after that 1-year grace period would be considered invalid.

The pre-AIA section read:

35 USC 102 35 U.S.C. 102 (PRE‑AIA) CONDITIONS FOR PATENTABILITY; NOVELTY AND LOSS OF RIGHT TO PATENT.
A person shall be entitled to a patent unless —
• (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
• (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, or …

The AIA changed the statutory language around “on sale” and this section now reads:

35 USC 102
(a) NOVELTY; PRIOR ART.— 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; …

Ever since the AIA came into effect, there has been some questions in the Patent community about whether the new language changed the prior interpretation of the on-sale bar and that now “private” sales to third parties were no longer considered prior art (or did not start the count on the 1-year grace period). A case has made it to the Supreme Court that will hopefully give us some clarity regarding this issue.

The case is Helsinn Healthcare SA v. Teva Pharmaceuticals USA Inc., No. 17-1229. This case is worth keeping an eye on as it may change the filing strategies for patent applications that come out of research agreements, joint development agreements, or manufacturing agreements.

Link to case

First Post

Welcome to my first blog post where I will be making posts about current events in the world of Intellectual Property Law and Legal Technology. I hope you find it informative. Send us a message on the Contact Us page if you have a question or need help.