Tag: Court Rulings

Corset Stays - Public Use vs. Public Disclosure in Patents

Public Use Bar

Public Use Bar: A Cautionary Tale for Innovators

For anyone in the world of Patents, the terms “public use” and “public disclosure” are critical—and often misunderstood. 35 U.S.C. § 102 defines these terms and their implications for patentability.

Grace Period

A key point to remember:  the U.S. has a unique one-year grace period for filing a patent application after a public disclosure. In most other countries, any public disclosure can immediately bar you from obtaining a Patent. This is a crucial distinction that can make or break your intellectual property.

Defining the Public Use Bar

What exactly constitutes “public use bar”?  Can a use be “public” even when it’s hidden from the public eye?

The U.S. Supreme Court’s 1881 decision in Egbert v. Lippmann (104 U.S. 333) provides a fascinating and enduring lesson. The inventor in this case created improved corset steels in 1855, giving them to a single individual to use. Even though the steels were never publicly seen, the Court ruled that this was a public use. The inventor’s subsequent patent, filed years later, was therefore invalidated.

The Egbert Court’s conclusions still stand as a stark warning:

  • A single public use is enough. You don’t need to have a crowd of people using your invention to trigger the bar.
  • Unrestricted use is public use. If you give or sell your invention to another person without any confidentiality agreements or restrictions, that use is considered public.
  • However, experimental use is an exception. A use that is open to public view but is made in good faith solely for testing and experimental purposes does not count as a public use.

Egbert serves as a powerful reminder: the definition of “public use” is far broader than most people realize.

Protect Your Innovation

Don’t let a seemingly private action become a public forfeiture.

35 U.S.C. 102, in part, reads:

(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; or

          (2)    the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

(b)    Exceptions.—

          (1)     Disclosures made 1 year or less before the effective filing date of the claimed invention.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

                    (A)    the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

                    (B)    the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

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Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.  If you need assistance, please contact Business Patent Law, PLLC.

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The Patent Exhaustion Doctrine - Monsanto Case on GMO Soybeans

The Patent Exhaustion Doctrine

When does the Patent Exhaustion Doctrine Apply?

In the US Supreme Court case of Bowman v. Monsanto Co., 569 U.S. 278 (2013), the Court set forth some thresholds for the application of the Patent Exhaustion Doctrine.

The Monsanto Facts

Monsanto invented a genetic modification that enables soybean plants to survive exposure to glyphosate, the active ingredient in many herbicides (including Monsanto’s own Roundup). Monsanto markets soybean seed containing this altered genetic material as Roundup Ready seed. Farmers planting that seed can use a glyphosate-based herbicide to kill weeds without damaging their crops. Two patents issued to Monsanto cover various aspects of its Roundup Ready technology, including a seed incorporating the genetic alteration.

Monsanto sells, and allows other companies to sell, Roundup Ready soybean seeds to growers who assent to a special licensing agreement. That agreement permits a grower to plant the purchased seeds in one (and only one) season. He can then consume the resulting crop or sell it as a commodity, usually to a grain elevator or agricultural processor. Under the agreement, the farmer may not save any of the harvested soybeans for replanting, nor may he supply them to anyone else for that purpose.

The Bowman Facts

Bowman, an Indiana farmer, devised an approach for his second crop of each season. Because he thought such late-season planting “risky,” he did not want to pay the premium price that Monsanto charges for Roundup Ready seed. He therefore went to a grain elevator; purchased “commodity soybeans” intended for human or animal consumption; and planted them in his fields. Those soybeans came from prior harvests of other local farmers. And because most of those farmers also used Roundup Ready seed, Bowman could anticipate that many of the purchased soybeans would contain Monsanto’s patented technology.

When he applied a glyphosate-based herbicide to his fields, he confirmed that this was so; a significant proportion of the new plants survived the treatment, and produced in their turn a new crop of soybeans with the Roundup Ready trait. Bowman saved seed from that crop to use in his late-season planting the next year—and then the next, and the next, until he had harvested eight crops in that way. Each year, that is, he planted saved seed from the year before (sometimes adding more soybeans bought from the grain elevator), sprayed his fields with glyphosate to kill weeds (and any non-resistant plants), and produced a new crop of glyphosate-resistant—i.e., Roundup Ready—soybeans.

In his defense, Bowman argued the Patent Exhaustion Doctrine.

The Bowman Court’s Holding on the Patent Exhaustion Doctrine

On Page 289 of Bowman, Justice Kegan wrote, “Our holding today is limited—addressing the situation before us, rather than every one involving a self-replicating product. We recognize that such inventions are becoming ever more prevalent, complex, and diverse. In another case, the article’s self-replication might occur outside the purchaser’s control. Or it might be a necessary but incidental step in using the item for another purpose…We need not address here whether or how the doctrine of patent exhaustion would apply in such circumstances. In the case at hand, Bowman planted Monsanto’s patented soybeans solely to make and market replicas of them, thus depriving the company of the reward patent law provides for the sale of each article. Patent exhaustion provides no haven for that conduct. We accordingly affirm the judgment of the Court of Appeals for the Federal Circuit.”

If your company needs assistance with its Patent Applications, please contact Business Patent Law, PLLC.

Ask Us Anything…about Intellectual Property!

If you or your business are located in the greater Cincinnati, Indianapolis, Lexington, or Louisville standard metropolitan statistical areas and have a topic or question you would like Business Patent Law, PLLC to address in the blog, please send us an email.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.  If you need assistance, please contact Business Patent Law, PLLC.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.