No Commercialization, No Bar
Now, referring back to the Invitrogen case, the Federal Circuit overturned the District Court’s ruling because it misapplied Section 102(b). The lower court applied a totality of the circumstances test of public use, whereas public use under Section 102(b) should be found after the following inquiries: (1) prior to one year from the filing date of a patent, was the claimed invention both in public use and ready for patenting? (2) if both characteristics were found, was the use accessible to the public or commercially exploited?
Regarding the first prong, an inventor’s own work cannot be used to invalidate patents unless the inventor places the invention on sale or uses it publicly more than a year before filing a patent application. To qualify as public, a use must occur without any limitation or restriction, or injunction of secrecy. In Invitrogen, the invention was maintained as a trade secret, i.e., under a strict obligation of secrecy.
With regard to the second prong, there was no commercial exploitation of the invention. Accordingly, the facts in the Invitrogen case were insufficient to erect a public use bar to patentability under Section 102(b).
Still, an agreement of confidentiality is not essential to render a use not public. For example, in Moleculon Research Corp. v. CBS, Inc., an inventor’s private use of the invention, as well as explanations of the operation of his invention to friends and university colleagues, were not deemed to constitute public use.
The author of the Invitrogen opinion, Judge Rader stated that commercial exploitation is a clear indication of public use, but it likely requires more than, for example, a secret offer for sale. Whether an offer for sale made subject to a confidentiality agreement is enough to withstand an on-sale bar attack under section 102(b) is by no means certain, but taking care to maintain confidentiality presents a compelling argument.
Following this fuller understanding of public use provided by the Federal Circuit, a few thoughts can be passed along. First, keeping a thing or process that furthers research as a trade secret in and of itself should not jeopardize a later-filed patent directed at such an invention, with one caveat: if a second inventor independently invents the same thing later than the first inventor, and files a patent application on it first, the first inventor will lose the chance to get a patent for having concealed the invention.
Second, using the invention as a trade secret to develop a product should not jeopardize the later-filed patent either, that is, not until the product is offered for sale. Once a year has passed since the product was first offered for sale, no patent to the product, its method of making, or a tool used in that method will be free of a Section 102 (b) public use challenge.
And third, before a phone call is made to a prospective partner, customer, or licensee to see if there is interest, it would be prudent to call a patent lawyer.