Two Recent Federal Circuit Opinions Illustrate Risk Of Product Demonstrations For Patent Validity

• Published date: 15 August 2023
• Subject Matter: Intellectual Property, Patent
• Law Firm: Cooley LLP
• Author: Mr Daniel Knauss and Brittany Cazakoff

Section 102 of the Patent Act holds that an invention may not be patented if it was in public use before the effective filing date of the patented invention.¹ The public use bar to patenting is triggered if the invention is both "in public use" and "ready for patenting."² Federal Circuit precedent holds that an invention is in public use if it is "accessible to the public or commercially exploited."³ Put another way, an invention is in public use if it is "shown to or used by an individual other than the inventor under no limitation, restriction, or obligation of confidentiality."⁴

Courts also look to contextual factors, such as "the nature of and public access to activities involving the invention [and] confidentiality obligations imposed upon observers."⁵ An invention is "ready for patenting" when either the subject matter of the claimed invention is in the possession of the inventor and known to work for its intended purpose, which can be shown by the existence of a working prototype, or the inventor has prepared drawings or other descriptions of the invention that are specific enough to enable a skilled artisan to practice the invention.⁶

Importantly, depending on the nature of the invention, the "mere display" of a prototype or sample may not constitute an invalidating public use. For example, the display of a later-patented new keyboard design was not a public use because the public was only provided with a visual view of the keyboard without any disclosure of the technology that actually sought to be patented, which involved data entry using the keyboard.⁷ On the other hand, it is not a requirement that inventors physically handle or operate the invention on display; all that is required is that the inventor use the invention in public such that a skilled observer who is not under any confidentiality obligation can understand the invention.⁸

An invention also can be considered ready for patenting even if it is still undergoing testing or improvement.⁹ For example, Food and Drug Administration (FDA) approval of an invention is not a prerequisite for considering a therapeutic invention ready for patenting.¹⁰ All that is necessary is that the inventor was in possession and knew the invention to work, or had prepared documentation sufficient to enable a skilled artisan to practice the invention.

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