Preserving Patent Rights: Impact of Public Use on Patenting
JD Supra Law
MARCH 10, 2025
For a business planning to market a product that incorporates an invention, having an enforceable patent to protect the invention is often desirable.
Guest Post by Profs. Masur & Ouellette: Public Use Without the Public Using
Patently-O
FEBRUARY 26, 2023
What is it that makes a use “public” for purposes of the public use bar? Does it matter whether the person doing the using is a member of the public, as opposed to the inventor? Or does it matter whether the use is itself in public, as opposed to taking place in secret behind closed doors?
Public Use 
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Confidentiality restrictions around clinical trials and prior public use (T 0670/20)
The IPKat
JANUARY 31, 2023
The patent was for a tablet formulation that had been given to patients in a clinical trial conducted before the patent had been filed. The question became whether the patients could be considered members of the public, and whether their participation in the clinical trial therefore constituted prior public use of the formulation.
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“Prior public use”: an effective ground for opposition against the grant of a European patent
Garrigues Blog
NOVEMBER 15, 2021
The opposition procedure for European patents, enables third parties, within nine months of the publication of the mention of the grant of the patent, to oppose that patent at the European Patent Office (EPO). One of the most effective ways of obtaining the revocation is to prove “prior public use”.
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Federal Circuit Holds Surgical Patent Anticipated Under Pre-AIA 35 USC102b Public Use
JD Supra Law
FEBRUARY 22, 2023
9,186,208 (the ’208 Patent) are anticipated under the public use bar of pre-AIA 35 U.S.C. § This is an appeal from a District of Delaware summary judgment order that held that the asserted claims of U.S. By: Allen & Overy LLP
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Public use == “accessible to the public.”
Patently-O
FEBRUARY 16, 2023
by Dennis Crouch Bottom line in this new Minerva case — file your patent application before bringing a new product to a trade show. Minerva’s ‘208 patent claims a device for endometrial ablation and includes a 2011 priority filing date. 2007), the Federal Circuit seemed to have ruled that public use requires use.
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No Handling Necessary: Industry Demo Was A Public Use: Minerva Surgical, Inc. v. Hologic, Inc., 2023 WL 1999900 (Fed. Cir. Feb. 15, 2023)
JD Supra Law
MARCH 7, 2023
Minerva”) had engaged in an invalidating public use more than one year before its patent filing. . On February 15, 2023, the Federal Circuit (“CAFC”) affirmed a summary judgment ruling that, by merely showcasing an embodying device at an industry event (the “Event”), Minerva Surgical, Inc. By: Irwin IP LLP
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Federal Circuit Clarifies Public Use Bar Requirements in Win for Hologic Against Minerva
IP Watchdog
FEBRUARY 15, 2023
Court of Appeals for the Federal Circuit (CAFC) on Wednesday issued a precedential opinion clarifying the requirements for the disclosure of technology that is ready for patenting at a public event to qualify as being “in public use” for purposes of the pre-America Invents Act (AIA) public use bar under 35 USC 102(b).
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Public-Use Bar: What Startups Need to Know
IP Watchdog
OCTOBER 26, 2023
Many startups are aware of how the on-sale bar interacts with these pressures and the associated need to file patent applications on any technology prior to offering or placing it on sale. However, fewer startups are aware of the public-use bar and how activities pursued with the goal of growing their businesses may unwittingly invoke it.
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Does Displaying a Flowering Plant Preclude Patenting It?
The IP Law Blog
FEBRUARY 16, 2023
This month the Federal Circuit decided a case involving whether the display of a flowering plant constitutes an invalidating prior public use. Wingen LLC (“Wingen”) applied for a reissue of its utility patent for a Calibrachoa plant, called Cherry Star, which is similar to a petunia.
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When “Displaying” Is “Using” For Prior Public Use Under 35 U.S.C. 102(b)
JD Supra Law
FEBRUARY 22, 2023
Last week, in a non-precedential opinion for an appeal from a Patent and Trial Appeals Board (PTAB) decision (In re WinGen), the Federal Circuit addressed prior public use under pre-AIA 35 U.S.C. § By: Womble Bond Dickinson
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Exporting Patents: Boiled, Broiled, Barbecued or Fried
Patently-O
JANUARY 17, 2022
The Deepsouth case was about patented equipment for deveining shrimp in order to render them “more pleasing to the fastidious as well as more palatable.” patent law. patents are territorially limited. We know that U.S. patents are territorially limited. Patent Law Amendments Act of 1984, Pub. We know that U.S.
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Right to Health and the Issue of Compulsory Licensing for Exorbitantly Priced Risdiplam
SpicyIP
MARCH 11, 2025
Looking at different flexibilities under the Patent Act, like compulsory licensing, government use etc., The argument to use these levers to ensure access to essential drugs for SMA patients has been discussed by Sabeeh previously on the blog here in light of MP Haris Beerans letter to the Government making a similar request.
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Patent Law Canons and Canards: Bonito Boats
Patently-O
AUGUST 22, 2022
For our patent law course today, the students read the Justice O’Connor unanimous opinion in Bonito Boats, Inc. The Florida courts had refused to enforce the law because it conflicted with Federal Patent Law. The Florida courts had refused to enforce the law because it conflicted with Federal Patent Law. 141 (1989).
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Statutory Text vs. Precedent: Analyzing the AIA’s On-Sale Bar for Secret Processes in Celanese v. ITC
Patently-O
MARCH 28, 2025
patent law over the past several decades, the America Invents Act of 2011 was clearly the most dramatic rewriting of the law since 1952. 102(a)(1) now reads: A person shall be entitled to a patent unless. (a)(1) Continue reading this post on Patently-O. My bet is on the precedent.
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WHITE PAPER | Key Patent Developments of 2023
JD Supra Law
DECEMBER 21, 2023
In a noteworthy year for patent law, the U.S. Court of Appeals for the Federal Circuit issued several decisions that will shape the patent landscape and the Federal Rules of Evidence governing expert testimony were amended. Supreme Court and the U.S. By: Smith Anderson
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Federal Circuit Narrows AIA Grace Period: Public Disclosure Must Make Invention ‘Reasonably Available’
Patently-O
AUGUST 5, 2024
Kaijet highlights the narrowness of the pre-filing grace period (safe harbor) provision under the America Invents Act (AIA) and serves as a reminder that there are a number of patents that would have been valid under the pre-AIA patent system may no longer be valid under the current law. Sanho Corp. 2023-1336 (Fed. July 31, 2024). .”
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Functional Medical Device Demonstrated at Trade Show Trigged On Sale Bar of pre-AIA 102(b)
JD Supra Law
FEBRUARY 22, 2023
9,186,208 on surgical devices for a procedure called endometrial ablation were anticipated under the public use bar of pre-AIA 35 U.S.C. § Hologic, Inc., 2021-2246] (February 15, 2023), the Federal Circuit affirmed summary judgment that the asserted claims of U.S. By: Harness IP
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Two Recent Federal Circuit Opinions Illustrate Risk of Product Demonstrations for Patent Validity
JD Supra Law
AUGUST 15, 2023
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. The public use bar to patenting is triggered if the invention is both “in public use” and “ready for patenting.”
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Request for Comments on USPTO Initiatives to Ensure the Robustness and Reliability of Patent Rights
Patently-O
JANUARY 21, 2023
Identify any specific sources of prior art not currently available through the Patents End-to-End Search system that you believe examiners should be searching. How should the USPTO facilitate an applicant’s submission of prior art that is not accessible in the Patents End-to-End Search system ( e.g., “on sale” or prior public use)?
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How Clinical Trials Affect Patentability In US And Europe
IP Law 360
MAY 15, 2024
and European patent decisions — concerning the effect of disclosures in clinical trials on the patentability of products — offers guidance on good practice for companies dealing with public use issues and prior art documents in these commercially important jurisdictions, say lawyers at Finnegan.
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Does Displaying a Flowering Plant Preclude Patenting It?
LexBlog IP
FEBRUARY 16, 2023
This month the Federal Circuit decided a case involving whether the display of a flowering plant constitutes an invalidating prior public use. Wingen LLC (“Wingen”) applied for a reissue of its utility patent for a Calibrachoa plant, called Cherry Star, which is similar to a petunia. § 161. .” § 161.
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How Does One “Use” Flowers?
Patently-O
FEBRUARY 6, 2023
The utility patent at issue covers a petunia plant. Here, the Federal Circuit has affirmed that the claims are invalid based upon a pre-filing trade-show display of the ornamental plant — holding that the display counted as a “public use.” The oddity of this utility patent is that it claims an ornamental plant.
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A more nuanced approach to the evidence standard for prior use (T 1311/21)
The IPKat
JANUARY 16, 2025
The case at issue concerned European patent EP2950075 , owned by Horiba Ltd, relating to an on-road running exhaust gas test apparatus. The patent claimed an apparatus for vehicle exhaust gas testing comprising an information processing unit connected to a display that could acquire and process running data during road tests.
A Private Sale Is Not Sufficient for Public Disclosure Under 35 USC 102(b)(2)(B)
JD Supra Law
AUGUST 2, 2024
Appeal from the Patent Trial and Appeal Board. Summary: An invention is not “publicly disclosed” under 35 USC 102(b)(2)(B) by the inventor’s private sale, even though a private sale may constitute an invalidating “public use” under 35 USC 102(a)(1). Before Dyk, Clevenger, and Stoll. By: Knobbe Martens
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Installation Payments Fly Under the On-Sale Bar Radar
JD Supra Law
OCTOBER 3, 2024
16, 2024) - On September 16, 2024, a special master for the Northern District of Georgia issued a report and recommendation to deny Ionic Air Care’s motion for summary judgment that Aviation Clean Air’s patents were invalid under the “public use” and “on-sale” bars to patentability of 35 U.S.C. § By: Irwin IP LLP
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Prior Art: The Patent Pitfall
Larson & Larson
FEBRUARY 13, 2021
A high number of patent applications are given a non-final rejection from the USPTO according to Yale. Often, the reason that the patent office will cite for rejecting an application is the presence of prior art. You may have heard the term ‘prior art’ before in the context of patents. What is Prior Art?
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Can You Patent Your Idea?
LexBlog IP
NOVEMBER 7, 2021
The United States Patent and Trademark Office (USPTO) grants patents to inventions every day. Not every application succeeds in becoming a granted patent, though. Important requirements must be met in order for an invention to be patented. Usefulness: This is a low bar to meet, fortunately.
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Empowering Innovation: The Role of Intellectual Property in Technology Transfer
IP and Legal Filings
MAY 10, 2024
Its gained momentum with the advent of importance in R&D and patent registration. It’s the first important step towards protecting owner’s rights and its lawful public use. The transfer is facilitated in India by the Indian Patent office. Well, it helps in commercialisation of the invention by allowing its public use.
No First Place Trophy Here: Public Demo at Trade Show Found Invalidating
JD Supra Law
FEBRUARY 24, 2023
Addressing the public use bar of pre-America-Invents-Act (AIA) 35 U.S.C. § Minerva Surgical, Inc.
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Printed Publication: Documents Made Available only to Customers
Patently-O
AUGUST 13, 2021
The 1836 Patent Act added the caveat that no patent should issue on an invention previously “described in any printed publication.” ” That language has carried through the various major patent law overhauls and continues as a prominent aspect of 35 U.S.C. by Dennis Crouch. 102(a)(1).
Does Displaying a Flowering Plant Preclude Patenting It?
JD Supra Law
FEBRUARY 17, 2023
This month the Federal Circuit decided a case involving whether the display of a flowering plant constitutes an invalidating prior public use. It’s not surprising to hear talk of flowers in February, but it is unusual when that discussion is in a Federal Circuit opinion. By: Weintraub Tobin
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MYTH VS. REALITY: CAN YOU PATENT AN IDEA?
Intepat
OCTOBER 6, 2024
One of the most controversial topics is the patentability of an idea , as it creates confusion between the understanding of an idea and an invention. Therefore, it’s the invention that could get patented and not the idea. As aforementioned, an idea is the start of an innovation, but the idea alone cannot be patented.
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My Word! Design Patents on a Typeface
LexBlog IP
FEBRUARY 14, 2023
Utility patents are for functional inventions. Design patents protect the look of something functional, regardless of whether the functional aspects are new. Because of this, a popular use of design patents is to protect the outside of common consumer products. Design patent protection can be a strong enforcement tool.
Under Lock And Key – Private Sales May Not Qualify As Public Disclosure
JD Supra Law
SEPTEMBER 20, 2024
102(a)(1) provides, in part, that a person is not entitled to a patent if the claimed invention was in public use, on sale, or otherwise available to the. The Leahy-Smith America Invents Act provides exceptions for certain disclosures that would otherwise be considered prior art under 35 U.S.C. § 2] Specifically, 35 U.S.C. §
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Minerva Surgical Inc. v. Hologic Inc., No. 2021-2246, slip op. (Fed. Cir. Feb. 15, 2023).
Intellectual Property Brief
MARCH 23, 2023
The public display of simply a prototype of a patentable technology for marketing purposes, over a year prior to its patenting, is enough to rule that the technology is in public use, ready for patenting, and is thus invalid. filed a patent for a medical device called the Aurora. Minerva Surgical Inc.
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Functional Medical Device Demonstrated at Trade Show Trigged On Sale Bar of pre-AIA 102(b)
LexBlog IP
FEBRUARY 21, 2023
9,186,208 on surgical devices for a procedure called endometrial ablation were anticipated under the public use bar of pre-AIA 35 U.S.C. § The Federal Circuit then pointed out that at the time of the public use, the technology was “ready for patenting.” Hologic, Inc., § 102(b).
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Post-IPR Estoppel: Printed Publication vs. Actual Product Shown in the Publication
Patently-O
SEPTEMBER 9, 2021
As is usual these days, ELCO turned-around and filed an inter partes review petition — challenging the patent’s validity based upon a 2011 product catalog (printed publication) that had featured the Hatteras lighting product. The court has denied DMF’s mandamus petition on an interesting post-IPR estoppel question.
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Never too late: if you missed the IPKat last week
The IPKat
FEBRUARY 1, 2023
Patents Benjamin unpacked a patent royalties dispute between the University of Oxford and a student inventor, where the English High Court explained which categories of students should be treated as consumers for the purposes of consumer protection law, and why. We can’t believe it’s already February. Here’s what you missed last week.
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Understanding The Patent Specification Of An Invention
Intepat
JANUARY 17, 2023
A patent specification is a disclosure to the public at large regarding the invention as well as the scope of protection that would be granted to the invention. It is a crucial techno-legal document constituted by scientific and technical disclosures which designate the basis of the rights of a patent. Amendments. Conclusion.
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The IPKat EPO Boards of Appeal Year in Review 2023
The IPKat
DECEMBER 22, 2023
PatKat reviewing the year It is time once more for the IPKat patent year in review! The topic of prior use has been elevated to the status of a referral to the Enlarged Board of Appeal ( G1/23 ). At the very least, LLMs have substantially lessened the burden of sourcing cat-themed patent blog illustrations.
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Understanding Compulsory Licensing and Access to Essentials
Kashishipr
NOVEMBER 10, 2021
A compulsory license is an authorization provided by a national authority to an individual without seeking the consent of the titleholder but after payment of royalties/compensation for the exploitation of the subject matter protected by the law on patents or other IPRs.
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I was already like this before you got here: prior use as an exception to patent infringement
Garrigues Blog
JANUARY 12, 2022
The owner of a patent cannot enforce their rights against those who used the invention covered by the patent or made serious preparations for such use before the priority date. What is the right of prior use or “pre-use”? What prerogatives does the right to prior use grant?
Patent Opposition in India
Biswajit Sarkar Copyright Blog
OCTOBER 22, 2021
Patent opposition, if used properly, is an important tool to prevent the grant of frivolous patents. However, this raises question of the misuse of opposition to prevent patents with great competitive value thereby affecting the business of competitors. Types of Patent Opposition in India.
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