Law 677 | Patent Law | Spring 2001

Law 677 | Patent Law | Spring 2002

Novelty & Statutory Bars II:
"Public Use"
"Experimental Use"
"On-Sale"
"Printed Publication"
"Patented"

US Court of Appeals for the Federal Circuit
@ Penn Law School February 6, 2002
Arguments: 2:30 PM
Meet w/ Students: ~ 5:30

Public Use

§ 102

A person shall be entitled to a patent unless:

(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 . . .

Egbert v Lippmann (USSC 1881)

invention: corset springs made of two or more metallic plates connected together

Three "observations":

(1) No need for more than one article to be used to constitute public use

(2) Number of persons who know about the invention does not determine whether a use is "public"

(3) Some inventions cannot be used where they are publicly seen; it is still a public use to sell/use a product containing them

What is the dissent getting at? (Why do we have the "public use bar"?)

Pennock v Dialogue (USSC 1829)

invention: a process of making hose joints where the joints resisted pressure well

the joints did not disclose the process

between invention and application, the patentee sold 13,000 feet of hose with the joints

statute says: no patent for anything "known or used before the application"

does this mean inventors cannot get patents if they use their inventions?

what does Pennock say is the reason for the "public use" requirement?

Metallizing Engineering Co. (2nd Cir. 1946)

invention: a process of "conditioning a metal surface" (used to build up worn metal parts of a machine)

The invention was used commercially (though secretly) prior to application -- he used it to fix machines

Is this a "public" use?

Grasselli Chemical	invention: process process was kept secret product was sold	prior use
Peerless Roll	invention: machine machine kept secret goods made by machine sold	no prior use
Gillman v Stern	invention: machine third-party kept machine secret third party made sales of the product	no prior use
Metallizing Engineering	invention: process process kept secret process used commercially (product was sold)	prior use

How do you distinguish these cases?

Two issues:

(1) the rights of the inventor to commercially exploit her invention

(2) the contribution to the prior art of a prior use

The public use bar addresses #1

Anticipation addresses #2

Moleculeon Research (Fed Cir 1986)

inventor had displayed models for ~10 years prior to application

had discussed commercializing the invention

key: control by inventor

Third Party Use:

WL Gore v Garlock (Fed Cir 1983)

invention was to a process to stretch Gore-Tex tape

third party used tape stretching machine; workings were confidential

how does this relate to Metallizing Engineering? Is this distinction tenable? Why?

Experimental Use

City of Elizabeth (USSC 1877)

invention: improved wooden pavement

pavement installed on a public highway

is this a public use?

Lough v Brunswick (Fed Cir 1996)

invention was a shaft seal for stern-drive engines

inventor made several, installed them on several boats

no notes were taken, no specific requests for feedback

is this experimental use?

court: experimental use is evaluated according to "totality of the circumstances"

number of prototypes
duration of testing
recordkeeping
secrecy agreements
compensation for use
extent of control by the inventor

What does the dissent say?

Reduction to Practice

reduction to practice: an invention works for its intended purpose when it is "reduced to practice"

question: can you have experimental use after an invention is reduced to practice?

RCA Corp. v Data General (Fed Cir 1989)

no – experimental use ends with reduction to practice

can this be reconciled with City of Elizabeth?

Relationship to Claimed Invention

cannot claim experimental use for unclaimed aspects / attributes of the invention

cannot claim experimental use when testing the market for the invention (see In re Smith)

On-Sale

§ 102

A person shall be entitled to a patent unless:

(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 . . .

Pfaff v Wells (USSC 1998)

on April 8, 1991, a purchase order for 30,100 units of the invention was placed (no prototype has been made)

Pfaff reduced the invention to practice in summer 1981

application filed on April 19, 1982

was the invention "on-sale" more than one year prior to application?

Pfaff opinion:

the Federal Circuit test was whether a patent was "substantially complete", measured by a totality of the circumstances

this test fails to provide adequate notice and is unsupported by the statute

the correct test: "ready for patenting"

How do we know whether an invention is "ready for patenting"?

(1) reduction to practice

(2) preparation of drawings or other descriptions "sufficiently specific to enable a person skilled in the art to practice the invention"

So what is the real test for "ready for patenting"?

Printed Publication

§ 102(a)

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

Jockmus v Leviton (2nd Cir 1928)

Printed catalog distributed to perhaps 1000 is a "printed publication"

Federal Circuit: the "touchstone" is public accessibility

In re Hall: single doctoral thesis could be publication, if catalogued

In re Cronyn: three undergraduate theses are not publication -- not catalogued

In re Carlson: Geschmackmuster (German design registration, summary of which is printed in the Federal Gazette) is a publication

microfilm: printed publication (publicly accessible)

note the (continuing) question of disclosure: In re LeGrice

even if public, the publication must fully disclose the invention, when in combination with knowledge of POSITA

in LeGrice, the picture of the roses did not explain to POSITA how to make them

Patented

102(a)

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

Bendix Corp. v Balax (7th Cir 1970)

invention: fluteless swaging tap

the asserted German patent (which was unpublished) did not claim the invention, but disclosed it

no anticipation: "patented" measures only to the scope of the claims, not the entire disclosure

so key question: what, precisely, is patented?

In re Bo Thuresson (CCPA 1958): "patented" means "equivalent to US patents, not mere registrations" -- requires public availability

Next Tuesday:

Novelty & Statutory Bars III:
"known or used by others . . ."
§ 102(c)
§ 102(d)
§ 102(e)
§ 102(f)
§ 102(g)