Use of an Invention: 'Anticipating'?

Although the text of '102(a) implies that any use of the invention by another before the invention by the applicant will anticipate a patent, this provision has been interpreted to require a “use which is accessible to the public” as a matter of public policy. See, e.g., Carella v. Starlight Archery, 804 F.2d 135, 139 (Fed. Cir. 1986). A use unknown to the public does not advance the public store of knowledge and it should not be used against a later inventor who discloses the invention to the public by filing a patent application. Woodland Trust v. Flowertree Nursery, 148 F.3d 1368, 1370 (Fed. Cir. 1998).

While the threshold determination for a '102(a) use is whether the prior use was public, the bar for finding a public use is set low. For example, the nonsecret use of an invention for its normal purpose is considered “public.” W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (holding that the selling of tape stretched using a special but nonsecret process was a public use of the process). Whether the secret use of a process is considered “public” depends on whether the public aspects of the use placed the claimed features of the invention in the public's possession. Lockwood v. American Airlines, 107 F.3d 1565, 1570 (Fed. Cir. 1997).

Public Uses Triggering a Statutory Bar Under '102(b)

Section '102(b) explicitly requires the prior use to be “public” to anticipate a patent. When applying this provision, courts use a “totality of the circumstances” test to determine whether the use is “public.” The test is based on four public policy concerns: 1) discouraging the removal, from the public domain, of inventions that the public reasonably has come to believe are freely available; 2) favoring the prompt and widespread disclosure of inventions; 3) allowing the inventor a reasonable amount of time following sales activity to determine the potential economic value of a patent; and 4) prohibiting the inventor from commercially exploiting the invention for a period greater than the statutorily prescribed time. Tone Bros., Inc. v. Sysco Corp., 28 F.3d 1192, 1198 (Fed. Cir. 1994).

Even a minor use can constitute a public use. The well-known Supreme Court case of Egbert v. Lippmann, 104 U.S. 333 (1881), established that a single use of an invention, known without restriction to only one person other than the inventor, and not observable by the public, is an anticipating public use. Id. at 336. The Federal Circuit followed this line of reasoning in New Railhead Mfg. v. Vermeer Mfg., 298 F.3d 1290 (Fed. Cir. 2002). In New Railhead, the patent at issue concerned a method of using a drill bit. The patentee asked the foreman of a drilling company to test the method, which the foreman did by drilling holes for a commercial client. The court held that the drilling was a public use of the method even though the foreman kept the use hidden from view. Id. at 1297.

Furthermore, an inventor's own use can constitute a public use under 35 U.S.C. '102(b) even when no one other than the inventor learns of the invention. In 1946, Judge Learned Hand established that the use of a secret process to manufacture a product is a public use, even if the process cannot be determined by examining the product. Metallizing Eng'g Co. v. Kenyon Bearing & Autoparts Co., 153 F.2d 516, 520 (2d Cir. 1946). The Federal Circuit adopted this reasoning in D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (Fed. Cir. 1983), where the invention at issue involved a method of producing emblems using foil-backed inserts. The court held that the act of placing the emblems on sale was a public use of the secret method. Id. at 1147-8.

However, an independent third party commercializing a secret process will not bar a later-filed patent application by a different inventor. In W.L. Gore, a third party used a secret process for stretching tape to manufacture and sell the resulting product. (This use was independent of the nonsecret use discussed above with respect to '102(a)). The court held that the patentee's later-filed application on the same process was not barred under '102(b), stating: “As between a prior inventor who benefits from a process by selling its product but suppresses, conceals, or otherwise keeps the process from the public, and a later inventor who promptly files a patent application from which the public will gain a disclosure of the process, the law favors the latter. W.L. Gore, 721 F.2d at 1550.

The ultimate rationale for treating a use differently depending on the user is unclear. While it supports the public policy of encouraging disclosure, there is no support in the text of '102(b) for distinguishing patent rights based on which party performed the use. See 2 Donald S. Chisum, Chisum on Patents, '6.02[5][c] (1999).

In contrast, a third party who uses a secret process misappropriated from the rightful inventor bars the inventor from obtaining a patent.

In Evans Cooling Sys., Inc. v. General Motors Corp., 125 F.3d 1448 (Fed. Cir. 1997), cert. denied, 522 U.S. 1115 (1998), the patentee, Evans, accused General Motors of stealing an inventive engine cooling system and placing it on sale more than a year before the filing date (thus triggering the '102(b) on sale bar). Evans asked the court to create an exception for the on sale bar when a seller steals an invention. In support of its position, Evans cited several Supreme Court cases for the proposition that misappropriation in the public use context does not invalidate a patent. Instead, the Federal Circuit characterized the relevant Supreme Court language as dicta and adapted the reasoning of a Third Circuit decision, which stated: “[t]here is not a single word in ['102(b)] which would tend to put an inventor, whose disclosures have been pirated, in any different position from one who has permitted the use of his process.” Id. at 1453 (citing Lorenz v. Colgate-Pamolive-Peet Co., 167 F.2d 423, 429-30 (3d Cir. 1947)). Therefore, there is no exception to the public use bar for misappropriation.

Another important factor in determining whether a use is public under '102(b) is the issue of experimentation. Courts, recognizing that an inventor will often need to test an invention in its normal environment, generally hold that such tests are not public uses. However, the testing period ends as soon as the invention works for its intended purpose. In fact, further “experimentation” past this point is considered a public use and can trigger the bar. For example, in Baxter Int'l v. Cobe Labs., 88 F.3d 1054 (Fed. Cir. 1996), a researcher had difficulty separating blood into its components without damaging the platelets. A colleague recommended that the researcher use a sealless centrifuge he had designed. The researcher built and tested the centrifuge, and it was immediately apparent that the centrifuge worked. The court found that the researcher's subsequent use of the centrifuge constituted a public use. Id. at 1060.

New Railhead presented a similar issue. The patentee argued that the drilling of the holes was necessary to test the invention. The evidence, however, showed that it was immediately apparent that the claimed method worked for its intended purpose. Therefore, the court declined to find that the subsequent drilling of the holes was an experimental use. New Railhead, 298 F.3d at 1299.

By contrast, in TP Labs, Inc. v. Professional Positioners, Inc. 724 F.2d 965 (Fed. Cir. 1984), the Federal Circuit held that the testing of an orthodontic device on three patients before the critical date did not give rise to a statutory bar. The court reasoned that due to the nature of the invention, “the test of necessity had to run for a considerable time and on several patients before the inventor could know whether 'it was what he claimed it to be' and would 'answer the purpose intended.'” Id. at 972. Therefore, the court found that the testing period was appropriate and did not amount to a public use.

In sum, although the text of ”102(a) and (b) suggests that there is a difference between a “use” and a “public use,” courts' interpretations of these provisions have made them almost indistinguishable. Rather, courts analyzing either provision focus on whether the alleged use was public. In the '102(b) context, the determination depends on who used the invention, how the user acquired the knowledge, and whether the use was experimental.

Under U.S. patent law, an inventor is entitled to a patent if the invention is useful, novel, and nonobvious. The “novelty” prong of this tripartite test is controlled by 35 U.S.C. '102, which defines the “prior art” (ie, already existing technology) that can “anticipate,” or render non-novel, the invention. In general, an invention sought to be patented is anticipated when it already exists in the prior art, having been placed there either by a third party or through the inventor's own actions. Under '102, prior use of the invention can anticipate a patent in certain circumstances. Specifically, the statute states that: “A person shall be entitled to a patent unless (a) the invention was … used by others … before the invention thereof by the applicant …; or (b) the invention was … in public use … more than one year prior to the date of the application.”

According to the plain language of the law, '102(a) is satisfied by any use of the invention by someone other than the applicant before the invention by the applicant. In contrast, '102(b) requires a public use of the invention, whether performed by the applicant or a third party, more than a year before the filing date of the patent application. However, as a practical matter, courts require a “public use” under either prong. The key question, therefore, is what constitutes a “public use”?

Uses Anticipating a Patent Under '102(a)

Although the text of '102(a) implies that any use of the invention by another before the invention by the applicant will anticipate a patent, this provision has been interpreted to require a “use which is accessible to the public” as a matter of public policy. See, e.g., Carella v. Starlight Archery , 804 F.2d 135, 139 (Fed. Cir. 1986). A use unknown to the public does not advance the public store of knowledge and it should not be used against a later inventor who discloses the invention to the public by filing a patent application. Woodland Trust v. Flowertree Nursery , 148 F.3d 1368, 1370 (Fed. Cir. 1998).

While the threshold determination for a '102(a) use is whether the prior use was public, the bar for finding a public use is set low. For example, the nonsecret use of an invention for its normal purpose is considered “public.” W.L. Gore & Assocs. v. Garlock, Inc. , 721 F.2d 1540, 1548 (Fed. Cir. 1983), cert. denied , 469 U.S. 851 (1984) (holding that the selling of tape stretched using a special but nonsecret process was a public use of the process). Whether the secret use of a process is considered “public” depends on whether the public aspects of the use placed the claimed features of the invention in the public's possession. Lockwood v. American Airlines , 107 F.3d 1565, 1570 (Fed. Cir. 1997).

Public Uses Triggering a Statutory Bar Under '102(b)

Section '102(b) explicitly requires the prior use to be “public” to anticipate a patent. When applying this provision, courts use a “totality of the circumstances” test to determine whether the use is “public.” The test is based on four public policy concerns: 1) discouraging the removal, from the public domain, of inventions that the public reasonably has come to believe are freely available; 2) favoring the prompt and widespread disclosure of inventions; 3) allowing the inventor a reasonable amount of time following sales activity to determine the potential economic value of a patent; and 4) prohibiting the inventor from commercially exploiting the invention for a period greater than the statutorily prescribed time. Tone Bros., Inc. v. Sysco Corp., 28 F.3d 1192, 1198 (Fed. Cir. 1994).

Even a minor use can constitute a public use. The well-known Supreme Court case of Egbert v. Lippmann , 104 U.S. 333 (1881), established that a single use of an invention, known without restriction to only one person other than the inventor, and not observable by the public, is an anticipating public use. Id. at 336. The Federal Circuit followed this line of reasoning in New Railhead Mfg. v. Vermeer Mfg ., 298 F.3d 1290 (Fed. Cir. 2002). In New Railhead, the patent at issue concerned a method of using a drill bit. The patentee asked the foreman of a drilling company to test the method, which the foreman did by drilling holes for a commercial client. The court held that the drilling was a public use of the method even though the foreman kept the use hidden from view. Id. at 1297.

Furthermore, an inventor's own use can constitute a public use under 35 U.S.C. '102(b) even when no one other than the inventor learns of the invention. In 1946, Judge Learned Hand established that the use of a secret process to manufacture a product is a public use, even if the process cannot be determined by examining the product. Metallizing Eng'g Co. v. Kenyon Bearing & Autoparts Co ., 153 F.2d 516, 520 (2d Cir. 1946). The Federal Circuit adopted this reasoning in D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (Fed. Cir. 1983), where the invention at issue involved a method of producing emblems using foil-backed inserts. The court held that the act of placing the emblems on sale was a public use of the secret method. Id. at 1147-8.

However, an independent third party commercializing a secret process will not bar a later-filed patent application by a different inventor. In W.L. Gore, a third party used a secret process for stretching tape to manufacture and sell the resulting product. (This use was independent of the nonsecret use discussed above with respect to '102(a)). The court held that the patentee's later-filed application on the same process was not barred under '102(b), stating: “As between a prior inventor who benefits from a process by selling its product but suppresses, conceals, or otherwise keeps the process from the public, and a later inventor who promptly files a patent application from which the public will gain a disclosure of the process, the law favors the latter. W.L. Gore, 721 F.2d at 1550.

The ultimate rationale for treating a use differently depending on the user is unclear. While it supports the public policy of encouraging disclosure, there is no support in the text of '102(b) for distinguishing patent rights based on which party performed the use. See 2 Donald S. Chisum, Chisum on Patents, '6.02[5][c] (1999).

In contrast, a third party who uses a secret process misappropriated from the rightful inventor bars the inventor from obtaining a patent.

In Evans Cooling Sys., Inc. v. General Motors Corp., 125 F.3d 1448 (Fed. Cir. 1997), cert. denied, 522 U.S. 1115 (1998), the patentee, Evans, accused General Motors of stealing an inventive engine cooling system and placing it on sale more than a year before the filing date (thus triggering the '102(b) on sale bar). Evans asked the court to create an exception for the on sale bar when a seller steals an invention. In support of its position, Evans cited several Supreme Court cases for the proposition that misappropriation in the public use context does not invalidate a patent. Instead, the Federal Circuit characterized the relevant Supreme Court language as dicta and adapted the reasoning of a Third Circuit decision, which stated: “[t]here is not a single word in ['102(b)] which would tend to put an inventor, whose disclosures have been pirated, in any different position from one who has permitted the use of his process.” Id. at 1453 (citing Lorenz v. Colgate-Pamolive-Peet Co., 167 F.2d 423, 429-30 (3d Cir. 1947)). Therefore, there is no exception to the public use bar for misappropriation.

Another important factor in determining whether a use is public under '102(b) is the issue of experimentation. Courts, recognizing that an inventor will often need to test an invention in its normal environment, generally hold that such tests are not public uses. However, the testing period ends as soon as the invention works for its intended purpose. In fact, further “experimentation” past this point is considered a public use and can trigger the bar. For example, in Baxter Int'l v. Cobe Labs., 88 F.3d 1054 (Fed. Cir. 1996), a researcher had difficulty separating blood into its components without damaging the platelets. A colleague recommended that the researcher use a sealless centrifuge he had designed. The researcher built and tested the centrifuge, and it was immediately apparent that the centrifuge worked. The court found that the researcher's subsequent use of the centrifuge constituted a public use. Id. at 1060.

New Railhead presented a similar issue. The patentee argued that the drilling of the holes was necessary to test the invention. The evidence, however, showed that it was immediately apparent that the claimed method worked for its intended purpose. Therefore, the court declined to find that the subsequent drilling of the holes was an experimental use. New Railhead, 298 F.3d at 1299.

By contrast, in TP Labs, Inc. v. Professional Positioners, Inc. 724 F.2d 965 (Fed. Cir. 1984), the Federal Circuit held that the testing of an orthodontic device on three patients before the critical date did not give rise to a statutory bar. The court reasoned that due to the nature of the invention, “the test of necessity had to run for a considerable time and on several patients before the inventor could know whether 'it was what he claimed it to be' and would 'answer the purpose intended.'” Id. at 972. Therefore, the court found that the testing period was appropriate and did not amount to a public use.

In sum, although the text of ”102(a) and (b) suggests that there is a difference between a “use” and a “public use,” courts' interpretations of these provisions have made them almost indistinguishable. Rather, courts analyzing either provision focus on whether the alleged use was public. In the '102(b) context, the determination depends on who used the invention, how the user acquired the knowledge, and whether the use was experimental.