One major alteration made by the Leahy-Smith America Invents Act is the change from a first-to-invent system to a first-to-file system. This change revised the “novelty provision” – 35 U.S.C. § 102 – eliminating all references to and determinations based on date of invention. However, the new language has raised several questions regarding the application of case law interpreting the 1952 novelty provision. One of these questions is whether the Metallizing Engineering forfeiture doctrine, which stated that an inventor who secretly uses an innovative process for commercial gain more than a year before applying for patent protection has forfeited the right to a patent on the innovation, is still in effect.
This Note analyzes the Metallizing Engineering forfeiture doctrine in light of the new AIA provisions. Part I discusses the origin of the doctrine and its policy underpinnings. Part II examines the new language and considers arguments put forth by patent law academics as to the effect of the text on the forfeiture doctrine. Many of the arguments point out the ambiguity present in the redrafted language and seek to find clarity in the legislative history of the AIA. Therefore, Part III combs the legislative history of patent reform, starting with the Patent Reform Act of 2005, to clarity the intended purpose of the new language. Despite the importance of the forfeiture doctrine, and the fact that several pieces of proposed legislation actually included clearer language that would have expressly overridden the Metallizing Engineering holding, the doctrine was discussed sparingly during congressional hearings. In Part IV, this Note concludes that the doctrine is not incompatible with the new priority scheme and is not expressly eliminated by the AIA. This Note argues that the legislative history relied upon for proof of legislative intent to eliminate the doctrine is unreliable. In the end, it appears that the AIA did not eliminate the forfeiture doctrine explicitly and it still could serve a useful purpose under the first-inventor-to-file priority scheme.