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Archived updates for Tuesday, October 11, 2005

Internal Development Does Not Bar Patentability

In Invitrogen Corp. v. Biocrest Manufacturing, L.P., et al. (Fed. Cir. October 4, 2005) the court held that Invitrogen's secret use of cells internally to develop future products that were never sold is insufficient to create a public use bar to patentability. Invitrogen did not sell its invention or any products made with it, and kept the invention entirely confidential within the company. According to Justice Rader,

In some cases, this court has determined that a use before the critical period was not public even without an express agreement of confidentiality. See, e.g., Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261 (Fed. Cir. 1986) (inventor’s private use and demonstrations to colleagues were not public). For instance, in TP Laboratories, Inc. v. Professional Publishers, Inc., 724 F.2d 965 (Fed. Cir. 1984), the inventor was a dentist who installed the inventive orthodontic appliance in several of his patients. Although the inventor had not obtained any express promise of confidentiality from his patients, this court did not consider the use "public" because the dentist-patient relationship itself was tantamount to an express vow of secrecy. Id. at 972. In reaching that result, this court opined in general that secret use may be public "within the meaning of the statute, if the inventor is making commercial use of the
invention under circumstances which preserve its secrecy." Id. This court noted
specifically that, under the facts of TP Laboratories, it could find no "commercial exploitation" of the invention during the critical period, identifying "commercial exploitation" with sale of the device or a charge for its use of the invention within the confidential confines of the company to generate commercial benefits. Id. at 972-73. Thus, TP Laboratories bolsters the general point that an agreement of confidentiality, or circumstances creating a similar expectation of secrecy, may negate a "public use" where there is not commercial exploitation.

The classical standard for assessing the public nature of a use was established in Egbert. In Egbert, the inventor of a corset spring gave two samples of the invention to a lady friend, who used them for more than two years before the inventor applied for a patent. Egbert, 104 U.S. at 335. The invention was sewn into a corset and therefore, by its nature, not visible to the public. Thus, the Court had to decide whether such an invention could nevertheless be "public." Although he later married the lady friend, the inventor in Egbert received no commercial advantage. Nonetheless, on these facts, the Court established the principle that it was indeed "public" use to give or sell the invention "to another, to be used by the donee or vendee, without limitation or restriction, or injunction of secrecy." Id. at 336.

As the Supreme Court pointed out in Pfaff, supra, secrecy of use alone is not sufficient to show that existing knowledge has not been withdrawn from public
use: commercial exploitation is also forbidden. Invitrogen’s invention was not
given or sold "to another," or used to create a product given or sold to another, and was maintained under a strict obligation of secrecy. Without more, these circumstances are insufficient to create a public use bar to patentability.

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