On October 28, 2022, the NAM filed an amicus brief in an appeal addressing an issue of first impression under U.S. patent law, as amended by the Leahy-Smith America Invents Act of 2011 (AIA)—whether a company’s sale of an unpatented product made by a secret patented process is a bar to patentability of that process under the AIA. In its appeal, Celanese sought to enforce its patent for the secret process used to create artificial sweetener Ace-K (which itself is not patented) against Chinese-based companies that were unlawfully using that patented process. The International Trade Commission concluded that Celanese’s sale of Ace-K invalidated the patent for its secret manufacturing process under the AIA’s on-sale bar.
In our brief, the NAM requests that the Federal Circuit reverse the International Trade Commission and hold that Celanese’s sale of Ace-K did not invalidate the patent for its secret manufacturing process. The International Trade Commission’s decision “finds no basis in the text of the AIA, undermines Congressional intent, and prevents manufacturers from developing complementary patent and trade secret rights.” All manufacturers depend on stable intellectual property laws to protect their investments and share an interest in knowing that their innovations will be subject to consistent protection worldwide.