Anticipating New References: Predicting the Contours of the New "Otherwise Available to the Public" Category of Prior Art

Abstract

As part of the move from a first-to-invent to a first-to-file patent system, the Leahy-Smith America Invents Act, passed in September 2011, modifies the novelty section of the patent statute. The new novelty section retains four familiar categories of prior art from the previous Patent Act, but also adds a new category: inventions “otherwise available to the public.” The Act does not define “otherwise available to the public,” leaving unanswered questions of what the drafters intended the new category to capture, and whether it truly encompasses any new types of prior art. This Note draws insights from the development of standards governing the retained categories of prior art, especially the printed publication category, to predict what new types of prior art references may be captured by the “otherwise available” language. Based on the policies underlying the “otherwise available” category, the Note argues that the language should be interpreted as extending the standards developed under the printed publication bar to non-documentary references, which would provide a flexible prior art category able to capture unanticipated new technologies and norms of disseminating information.